Instead, said the Court, national courts must consider 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 CJEU was asked to rule in the case which concerned essentially whether a Community trade mark (CTM) that had been put to genuine use in just one member state met the standard required in the EU Trade Mark Regulation.
The question has provoked controversy as accepted wisdom had always been that use in just one of the 27 EU member states should be sufficient to maintain a trade mark. But many practitioners have criticised that position, saying it is not practical in an EU that consists of 27 diverse countries, and leads to the CTM register being overcrowded.
In its judgment today, the Court acknowledged the difficulties raised by the various arguments, but was unable to fully resolve them.
It did say that, in certain circumstances, the market for the goods or services for which a CTM has been registered is restricted to the territory of a single state: “In such a case, use of the Community trade mark on that territory might satisfy the conditions both for genuine use of a Community trade mark and for genuine use of a national trade mark.” But it did not elaborate on the circumstances when this might be the case.
Moreover, the Court declined to lay down a de minimis rule. It said that, as the assessment of genuine use must consider all the relevant facts and circumstances, “it is impossible to determine a priori, and in the abstract, what territorial scope should be chosen in order to determine whether the use of the mark is genuine or not”.
Turning to the facts of the Onel v Omel case, the Court appeared to throw up its hands, saying it did not have “the factual information necessary” to provide “more specific guidance” to the national court.
However it did reject arguments stemming from cases such as General Motors and Pago International, as it said these concerned protection for trade marks with a reputation or that are well known, adding that “the requirement for genuine use, which could result in an opposition being rejected or even in the trade mark being revoked ... pursues a different objective from those provisions”.
