Genuine Use of a Community Trademark – It’s Not Where You Use But How You Use

The question of whether use of a Community Trademark in just one European Member State is “genuine use”, sufficient to defeat a revocation action for non-use, has been a question on the lips of Trademark owners and practitioners alike since the inception of the Community Trade Mark.

A recent opinion issued by the Attorney General in Leno Merken BV v Hegelkruis Beheer BV (149/11) has stated that the assessment of “genuine use” is not all about geography but instead, it is part of a market based assessment.

Despite arguments that use of a Community Trademark in one Member State does not constitute “genuine use”, the “Treaty on the Functioning of the European Union” states that the Community is an area “without internal frontiers in which the free movement of goods, persons, services and capital is ensured”. In essence, this means that it is incorrect to consider the Community Trademark as covering 27 separate Member States. Taken as a whole, emphasis will be placed on the market share held by the marked goods or services in their sector and the demand that exists within the European Union. The Attorney General gave the example of deep-fried Mars bars, sold in Scotland, where such use might be “genuine use” if it can be shown that there is no market for the goods outside that region.

The main point to be taken away from this opinion is that geography is only one of several factors to be considered in assessing “genuine use”. Regardless of success, what bears significance is the impact of the Trademark in the relevant marketplace and on the Community as a whole. This includes an assessment of the characteristics of the market for the relevant goods/services, if there are reasons why demand or supply might be limited, for example, due to language barriers, transportation, consumer habit or investment costs and also, whether use made of the Community Trademark has been in a territory where the relevant market is particularly concentrated.

In Pago v International GMBH v Tirolmilch Registrierte Genossenschaft mbH (301/07), the Court of Justice of the European Union (CJEU) was of the opinion that in order to establish a community wide reputation, there must be a reputation in a substantial part of the community as opposed to just one Member State. The same applies to “genuine use”, subject to certain conditions.

Dependent upon the manner in which your Trademark is used or intended to be, it might be prudent to consider national Trademark filings in preference to a Community Trademark Application.

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