It has been a while now that the Onel decision has been rendered by the Court of Justice. This time has allowed us to gather some opinions of others, to have a closer look at the decision and to discuss this with colleagues.
We notice that some are of the opinion that nothing has changed. Well, we do not think that is right. The Court of Justice states very clear that there is admittedly some justification for thinking that a Community trade mark should be used in a larger area. This ends the doctrine that use of a Community trademark in one Member State would per definition be sufficient. We feel that it will be more difficult to proof use of a Community trademark in the event this use has been limited in territory, intensity etc.
Furthermore, the Court of Justice tells us that the territorial scope is just one of the factors in order to assess the genuine use of a Community trademark, thus whether the commercial exploitation of the mark serves to create or maintain market share. The territorial scope is therefore no separate condition for genuine use. Moreover, territorial borders of the Member should be disregarded.
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. Again, territories of Member States do not play any role and the territorial scope is just one of the factors. We will have to keep in mind that the Community trademark has to be used in a larger area, but this could, in practice, encompass the territory of a (probably larger) Member State or even could be compensated by the intensity of use or other relevant factors.
In the event that the Community trademark concerns products or services in a niche market, this market can be restricted to the territory of a single Member State. In such a case, genuine use of the Community trade mark on that territory might satisfy the conditions. This situation will be rare, and the starting point will be in most cases the whole Community and whether or not the trademark has been put in use taking into account all relevant factors in determining use.
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“Trademark protection gives freedom to do business.”