THE ONEL CASE
All spotlights were on Onel trademarks, member of the Knijff Group, last years as Onel trademarks was the subject of the breaking case that has been followed by the media, many companies and attorneys.
The case has begun when Hagelkruis, a Dutch company, filed the trademark OMEL. Onel trademarks opposed this trademark on the basis of its European trademark ONEL. Hagelkruis took the view that Onel trademark had to furnish proof of use of its European trademark in more than one country as only use of the trademark in the Netherlands was not sufficient. Onel disagreed pointing on the current state of law.
The Benelux trademarks Office rendered a decision and approved the view of Hagelkruis. Onel trademarks appealed the decision and the Court of The Hague presented the hot issue with the Court of Justice for clarification.
The key issue
The main question is whether the use of a European trademark, a trademark right in 28 countries, is sufficient in the event this use concerns only one country. The standard policy of the Ohim (the European trademarks office) was that use in country should be automatically sufficient, this however has never been confirmed by an European judge.
Decision Court of Justice
The Court of Justice says that borders of Member states do not play a role in the assessment of genuine use. So you cannot say that an European trademark has genuinely been used in the event it is used in 3, 5 or 8 countries. This use depends on the market, the circumstances of the case etc. So, use in one country can therefore be sufficient.
However, the Court states that there is admittedly some justification for thinking that a Community trade mark should be used in a larger area than the territory of a single Member State because it enjoys more extensive territorial protection than a national trade mark. Having said that, use in a country may be sufficient, but only if certain circumstances are present. These circumstance are probably cases of niche markets that correspond with the borders of one Member State.
When the Onel-case begun, use of an European trademark in one country was anyway sufficient. Now, the Court of Justice does not exclude the possibility that use in one country can be sufficient but it seems that these cases where this use will suffice, are limited.
Sufficient reason to reconsider filing strategies as sometimes filing a national application might be sufficient and as wise decision.