Onel Community Trade Mark ("CTM") creates controversy over "genuine use"

“Genuine use” is a key consideration of the CTM system. Failure to put a CTM to genuine use after 5 years of registration puts the registration at risk of revocation.”(Contribution to the Study on the Overall Functioning of the Trade Mark System in Europe)

Many commentators, including the Office for Harmonization in the Internal Market (Trade Marks and Designs) (“OHIM”) and MARQUES (the industry trade mark organisation), adopt the argument that use of a CTM in only 1 EU Country on more than a minimal level will constitute genuine use.

However this position has been challenged in the case of Leno Merken B.V – v – Hagelkruis Beheer B.V, better known as the Onel / Omel case.

Hagelkruis applied for registration of the mark “Omel” in the Benelux. Leno – owner of the CTM “Onel” which has only been used in 1 of the 27 EU Member States i.e. the Netherlands – opposed the registration.

The Benelux Office for Intellectual Property (“BOIP”) ruled that the use of the CTM “Onel” in only 1 EU Member State was insufficient to constitute “genuine use” in the EU. As such, the CTM “Onel” could not be relied upon and opposition to the “Omel” mark was lost.

Leno has appealed BOIP’s decision to the Court of Appeal in The Hague.

The Court of Appeal, with the consent of both parties, has required the written procedure to be followed. Leno has 2 weeks to file its submission from 10 May 2010. After this, Hagelkruis will have 2 weeks to file a response.

In the meantime OHIM has published a statement confirming that it “continues to consider that boundaries of Member States should not play a part in assessing “genuine use” within the EU Single Market”.

The Onel decision seeks to raise the standard as to what constitutes “genuine use” necessary for continued registration. Until the Court of Appeal gives its ruling, the position remains uncertain.

Notwithstanding this, the Max Planck Institute is currently undertaking a Study of the Overall Functioning of the Trade Mark System in Europe . A workshop with the trade mark user organisations is being held on 8 June 2010. It is anticipated that this study, which is to be completed by the end of the year, will address what constitutes “genuine use”.

For more information on trade marks or other intellectual property rights including patents and copyright please contact Michelle Craven or Shelley Marshall.