With the Onel-case, the case brought by our sister company Onel trademarks, some interesting considerations came into European trademark law. It became clear that one can expect from a European trademark that the mark is put in use in a larger territory than a national trademark. The opinion that use in one Member State automatically is sufficient to demonstrate use was history. The Court of Justice however did formulate an exception: in case of a niche market use could be local, i.e. ice skates in Holland for example.
When looking at the use of a mark for mass products you will have to assess the genuine use of this Community trademark in the whole Community. The question is whether the European trademark has been put in use in a substantial part, whereas territories of Member States do not play any role. In practise, use of a trademark in a larger Member State, such as Germany could be sufficient, when the other “use”- factors are convincing as well.
An important consideration of the Court of Justice is that during the assessment of the use of a European mark, the geographical area is one of the factors to determine whether the use is genuine. In our view the different factors influence each other and can compensate each other. Under circumstances very intensive use of a trademark in a smaller area could therefore be sufficient.
3 years after the Onel decision it is interesting to see that the OHIM more or less shares our explanation. In case no. 5941 C Germany was found to be a substantial part and also in view of the evidence filed, the use was found genuine and other factors were convincing. This also applies to the UK whereas even use of a European trademark in only London was found to be sufficient. This use related to a well-known and exclusive restaurant which a reputation throughout the EU. In our view, an example how the factors compensate each other.
On the other hand, use of a trademark in only a few cities in Austria was not considered enough, the use and extent of use was not overwhelming.
Sometimes the OHIM is a bit too easy with the scope of use, to our opinion. In case 9510 the question was whether or not a trademark was used in relation to wine. The evidence filed proofed some selling by a few online retailers in Germany: 6000 bottles annually. For OHIM enough to see that there was some use and the intention to create a market share. As wine is a mass product with the whole EU as market place, 6000 bottles is very marginal and the outcome of this case is rather disputable.
Recently, the Royal Court of Justice in the UK took a decision that gives a different explanation and outcome of the Onel-case (IP14M00054, June 29, 2015). It is confirmed that the trademark SOFA WORKSHOP was used intensively in the UK. However, this use is insufficient to maintain the EU trademark as the the Court takes the view that an European trademark must be used in more than one Member State.
It is interesting to see how other courts and trademark offices will interpret the Onel-decision. In any case, it is clear that the Onel-case is only the beginning of much more case-law.
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“Trademark protection gives freedom to do business.”