European trademarks registrations are very popular with trademark holders because of the relatively low tariff. This popularity will probably decline after the opposition decision of the Benelux Office for Intellectual Property ("BOIP") in respect of the cases ONEL against OMEL.
Onel trademarks, a member of the Knijff Group, was confronted with a trademark OMEL in the Benelux and filed an opposition against this trademark on the base of their European trademark ONEL. While it was undisputed that Onel trademarks had used its trademark genuinely in the Netherlands, the counter party Hagelkruis Beheer B.V. argued that use of the trade mark in one country was insufficient to constitute genuine use.
The BOIP states in its decision that, in order to successfully base a trademark claim on an European trademark, this trademark should be used in more than one country alone. Use in the Netherlands was considered to be insufficient.
The requirements with respect to the geographical use of a European trademark set by the BOIP are rather severe. This decision can cause problems for owners of European trademarks that are used solely in one country of the Community.
Onel trademarks will appeal this decision.
Read more about this exciting case here.
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Spinning has become a generic term
District Court of The Hague, April 29, 2008. Mad Dogg Athletics, Inc. versus Batavus B.V.
Mad Dogg is owner of the trademarks SPIN, SPINNER and SPINNING and uses the marks in respect of 'bicycle fitness', a concept invented by the American Johnny Goldberg. Batavus sells bicycles under the name "Ultimate Spinning S3" and uses the word "spinner" in this regard. Mad Dogg claims that Batavus infringes their trademark rights.
Batavus defends by stating that Mad Dogg's trademarks have become generic terms and that Mad Dogg can therefore not derive any rights from them; after all, if the trademark owner is to blame that the trademark has become a generic term, the trademark registrations can be cancelled in court.
The court agrees with Batavus: Mad Dogg's trademarks have become generic, however, Mad Dogg is not to blame for this. The trademarks are therefore not being cancelled. They do, however, have a (very) limited scope of protection. Although, Mad Dogg still has valid trademark registrations, Batavus does not infringe these rights according to the court.


