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EU: Genuine Use of Community Trademarks
Changes due to recent CJEU decision C-149/11
Obligation to genuinely use a trademark
EU-wide protected Community Trademarks (as well as national trademarks) have to
be used for the claimed goods and services in the course of trade within the EU in
order to maintain their protection and enforceability. A (partial) lack of use, however, does not automatically result in a (partial) lapse of the trademark registration.
On the other hand, after an initial “grace period” of 5 years beginning with the registration of the trademark, genuine use of the trademark would have to be proven
when enforcing such trademark against third parties; furthermore, anybody could
request revocation of such trademark in so far as it had not been genuinely used for
goods and services covered by the registration (Art 15, 51(1)(a) CTMR).
Contact
Christian Schumacher
T: +43 1 534 37 178
E: c.schumacher@schoenherr.eu
Previous situation
Until recently, it was commonly held that genuine use of a Community Trademark in
only one single member state was sufficient for genuine use of the trademark within
the EU.
New principles of assessment following recent case-law
In a recent preliminary ruling which is binding for all EU-member states (case C149/11 of December 19, 2012), the Court of Justice of the European Union did not
follow this former common opinion. The CJEU now requires an individual assessment
aiming at the entire Common Market (i.e. the entire EU).
Contact
Michael Woller
T: +43 1 534 37 308
E: m.woller@schoenherr.eu
The Court of Justice of the European Union particularly held that territorial borders
of the Member States should be disregarded in the assessment of whether a trademark has been put to “genuine use in the Community.”
According to the judgment, a Community trademark is put to “genuine use” when it
is used in accordance with its essential function and for the purpose of maintaining
or creating market share within the Community for the goods or services covered by
it. Whether these conditions are met would have to be assessed on a case-by-case
basis, taking account of all the relevant facts and circumstances, including the characteristics of the market concerned, the nature of the goods or services protected
by the trademark, and the territorial extent and the scale of the use, as well as its
frequency and regularity.
Conclusions
This stance leads to a considerable legal uncertainty, as it will only follow from caseby-case decisions within the next years what exactly will be required for genuine
use in the EU. If disputed genuine use of a Community Trademark in the EU could
not be proven, the Community Trademark would have to be converted into national
trademarks of those member states in which the trademark had indeed been genuinely used (Art 112 CTMR).
In case use in the EU is intended, it seems to be advisable to ensure that advertising and marketing of the goods and services designated with the trademark verifiably aims at a larger territory within the EU, respectively that at least respective information is accessible (e.g. through advertising on a website, possibly also in foreign language versions) and that this is properly documented.
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