Genuine Use

By Morag Peberdy and Jacqueline Clover

Yesterday, judgment was delivered by the Court of Justice of the European Union (“CJEU”) in the ONEL case on what constitutes genuine use of a Community Trade Mark (“CTM”).  A CTM can be revoked if there has been no genuine use in the Community for 5 years.  The conventional wisdom was that use in a single country, as long as it was more than de minimis use, validates a CTM across the EU.  This was called into question by the Benelux first instance decision in ONEL.  Many had hoped that the CJEU would confirm that use in only one European country constitutes genuine use in the Community.  However, the CJEU ruled that the territorial extent of the use is just one factor to be taken into account when assessing genuine use.  Other relevant factors include the specific market for the relevant goods and services, the nature of those goods and services and the frequency and regularity of the use.  Consequently, in some cases, use in one country alone will constitute real commercial exploitation, but on other fact patterns use across a number of countries may not suffice.Continue Reading European Court of Justice Rules on What Constitutes Genuine Use of a Trade Mark