Once a Community Trade Mark (CTM) has been registered for an initial period of five years, the registration may be challenged on the ground that the trade mark has not been put to genuine use within the European Community during a continuous period of five years. In the event of such a challenge, the CTM proprietor is required to provide proof that there has been genuine use of the challenged trade mark within the EC during the five year period in question in respect of the goods and/or services covered by the CTM and the CTM registration will be cancelled in respect of any goods or services for which genuine use cannot be established.

The proprietor of a CTM which has been registered for more than five years may also be required to provide proof of genuine use of his CTM if the CTM is relied on in Opposition or Invalidity proceedings filed against a later trade mark.

The question of what constitutes genuine use of a CTM has been the subject of much debate since the introduction of the CTM registration system in 1996. OHIM, the body responsible for implementing the CTM system, has always adopted the position that genuine use of a CTM in a single EC Member State is sufficient to protect the CTM registration from a non -use challenge. However, some National Intellectual Property Offices, notably the Benelux Office, have taken a contrary view. In its decision on the ONEL v OMEL case, the Benelux Office held that, although the owner of the ONEL CTM had demonstrated genuine use of the trade mark in the Netherlands, such use did not constitute genuine use of the trade mark in the EC as a whole. The ONEL decision was subsequently appealed to the Court of Appeal in the Hague, who referred the case to the European Court of Justice (the ECJ).

In its decision, which was handed down on December 19 2012, the ECJ declined to give a categorical ruling on whether use of a CTM in a single Member State constitutes genuine use of the trade mark within the EC. However, the ECJ held that in assessing what constitutes genuine use of a CTM, the territorial borders of the individual EC Member States must be disregarded and that a CTM is put to genuine 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 for which the CTM is registered.

he ECJ also held that in assessing whether genuine use has been established, all of the relevant facts and circumstances must be considered, 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.

It is clear from the ONEL decision that whether use of a CTM in just one EC Member State is sufficient to establish genuine use within the EC as a whole will depend on the facts of each individual case. There will no doubt be cases where use of a CTM in a single Member State will be deemed sufficient to meet the criteria established by the ONEL decision and other cases where use confined to one Member State will not meet the relevant criteria. However, where use of a CTM is limited to one of the smaller EC Member States, such as Ireland, it is likely to be difficult for the CTM owner to establish that the territorial extent and scale of such use is sufficient to create or maintain market share within the EC as a whole and thus fulfil the criteria for genuine use promulgated by the ECJ in the ONEL case.

For further information please contact Bernadette Walsh by email at mail@maclachlan.ie