Onel-Omel: the German view (TomTec)

All you IP practitioners out there of course know about the “Onel-case”. The main question here is whether use in only one country of the European Union is to be considered sufficient use of a Community trademark.

The Dutch Court has asked prejudicial questions to the European Court of Justice about this matter.

Meanwhile, the German Federal Patent Court (BPatG) issued a decision stating that (significant) use of the trademark TOMTEC in Germany alone, established sufficient use according to Art. 15 of the Community Trademark Regulation.

The court referred to the unitary character of the CTM system and noted that “thinking in Member State categories” is inappropriate, given the supranational effect of a CTM.

This recent decision makes us anticipate even more the ECJ’s answers to the prejudicial questions.

The Onel-case touches a very important issue: if use in one one country in the EU is sufficient (e.g. Malta), one small enterprise can block a trademark for 27 countries! Even when it is used only in one.

On the other hand, the unitary character of the EU does indeed make it difficult to think in “countries”.

However, when the ECJ decides that use in only one country is insufficient, this will mean a very large number of current Community trademarks are vulnarable for cancellation, as a vast majority is being used in one country alone.

All in all, this is one of the hot topics in IP of the last few years.

To be continued…

Read all about the Onel-case here.

 

Erwin Hauër

“Hope is not a strategy.”

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