The Community Trade Mark (CTM) System was set up under the principle that if a trade mark was being used somewhere in the Community, even if only in one member state, this would be sufficient to maintain Community-wide rights. A recent Court of Justice of the European Union (CJEU) decision, however (Case C-149/11 Leno Merken v Hagelkruis Beheer B.V., the “ONEL” case) held that the principle does not have to be followed. Frustratingly, but not too surprisingly, the CJEU refused to provide a rule as to how much use will be enough. The CJEU only stated that a Community Trade Mark is put to use:
“When it is used in accordance with its essential function and for the purpose of maintaining or creating market share within the European Community for the goods or services covered by it. It is for the referring Court to assess whether the conditions are met… taking account of all the relevant facts and circumstances, including the characteristics of the market concerned, the nature of the goods or services protected by the Trade Mark and the territorial extent and the scale of the use as well as its frequency and regularity.”
The bottom line is that use in one country only may be enough, but it seems that it is unlikely to be so.
What should trade mark owners do:
- If a new filing is contemplated, it should first be determined where the mark is to be used in the EU. If the mark is not to be used in more than one member state in the next five years, a national trade mark application should be considered, possibly in parallel to a CTM application.
- If seniority is being claimed in relation to national registrations with respect to a CTM registration and the national rights are then to be allowed to lapse, make sure that the mark is used in several member states before allowing the national rights to lapse.
- If an opposition is to be filed against a CTM or national application based on a CTM registration which is over five years old, be aware that the CTM registration may be open to challenge if limited territorial use has been made of it. However, also bear in mind that the possibility of conversion to national rights in countries where there is use which will still be effective against a CTM application.
- For CTM registrations coming due for renewal, consider whether to convert to one or more national applications in the countries where there is use which will preserve the date of the CTM registration.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.