European Union Court Of Justice's Decision In The 'ONEL/OMEL' Case - How Much Use Is 'Genuine'?

The European Court of Justice, recently renamed the Court of Justice of the European Union ("CJEU"), released on December 19, 2012 its much anticipated decision in the case Leno Merken BV v. Hagelkruis Beheer BV (Case C-149/11, "ONEL/OMEL"). The issue in the case is whether genuine use of a Community trademark ("CTM") in just one of the Member States suffices to establish genuine use for this CTM throughout the entire European Union. Owners of CTMs frequently need to prove such genuine use in order to successfully overcome the defense of non-use, routinely raised by applicants or infringers in the course of oppositions or litigation, respectively, as justification against a cancellation motion. In a larger context, the decision also contains guidance regarding the criteria generally applicable for establishing genuine use within the meaning of Art. 15 CTMR.

The Facts of the Case in a Nutshell

Hagelkruis Beheer BV ("Hagelkruis") filed an application in the Benelux Office for Intellectual Property ("BOIP") for the registration of a national Dutch word mark "OMEL". Leno Merken BV ("Leno"), proprietor of the earlier CTM "ONEL", opposed this application. Hagelkruis resorted to the defense of non-use and requested that Leno provide proof of use of its CTM. Leno, in return, provided proof of use of the earlier mark "ONEL" only for the Netherlands, but in no additional Member State. Referring to such limited use, Hagelkruis requested revocation of "ONEL". The parties did not dispute the marks' similarity, that they were registered for identical or similar services, and that there was a likelihood of confusion. Such setting gave rise to the suspicion the litigation had been staged in order to obtain a decision on the underlying question of sufficient use. The BOIP accepted Hagelkruis' defense, Leno appealed and the Dutch Court of Appeal referred the case to the CJEU, asking it to respond to questions concerning interpretation of the term "put to genuine use in the Community" contained in Article 15 (1) of the CTMR. These originally very complex questions were summarized by Pieter Veeze, the BOIP's rapporteur in the original case as follows:

1. Is use in one country always enough? 2. If not, is it never enough? 3. If it is never enough, what is needed? 4. Should the assessment of genuine use in the Union be done in the abstract, without reference to the borders of the territory of the individual Member States? The CJEU's Decision

In the past, the...