The strategic question of what constitutes ‘genuine use’ of a Community Trademark (now EU Trademark), particularly on the territorial requirements, is often asked at European level. Is use required throughout the EU, for example; or, is proof of use of the mark in one market sufficient? How do you reach genuine use of trademarks on the EU Single Market?

1. 586 L. N. Milenkoviæ
Genuine use of a Community Trademark.
How to interpret use “in the Community”
By jur. kand., LL.M. Leonard Neno Milenkoviæ*
1. Introduction to the debate on genuine use
Few cases referred to the Court of Justice of the European Union (CJEU) have
been discussed as vigorously and given rise to such politically charged debates as
the ONEL case.1 A Community Trademark (CTM) must be put to use in or-
der to fulfill the requirement of genuine use in the Community in accordance
with Article 15 (1) Community Trademark Regulation (CTMR).2
The debate began when the Benelux Office for Intellectual Property (BOIP)
challenged the traditional interpretation of genuine use in the ONEL/OMEL
decision in 2010.3
The contentious issue revolves around whether genuine use
in one Member State can be sufficient to justify an exclusive right in the entire
territory of the European Union (EU). It is still unclear whether and to what
extent the ONEL case will have any significant effect in practice.4
After the rul-
ing by the CJEU, the territorial scope of the use is now only seen as one aspect
in the assessment of genuine use.
1.1 The intention of the article. Due to the enlargement of the EU, genuine use
“in the Community” has to be re-examined. The Max Planck Institute raised
1 Case C-149/11 Leno Merken BV AG v Hagelkruis Beheer BV [cit. as ONEL].
2 Council Regulation (EC) No 40/94 on the Community Trade Mark (presently No. 207/2009,
referred to as the CTMR).
3 Decision No. 2004448 of Benelux Office for Protection of Intellectual Property (BOIP), Intel-
lectuele Eigendom en Reclamerecht 2010/29 [cit. as ONEL/OMEL]; see BOIP site http://
www.boip.net. Last visited 19.12.2013.
4
Kur, Annette, Open Questions After ONEL/OMEL: What Kind of Use is This? IPR info [cit.
as Kur, Annette], p.11. Article available at the Intellectual Property Rights (IPR) University
Center site IPR info, http://www.ipr-info.com. Last visited 12.12.2013.; Cf. C-235/09 DHL
Express (France) SAS v Chronopost SA (DHL Chronopost) concludes that the unitary character of
the CTM has enabled pan-EU injunctions. A CTM with uniform effect over the entire territory
of the EU should entitle its proprietor to prevent any person, from making use of the CTM in any
part of the EU.
* The Author holds a LL.M. in European Intellectual Property Law (June 2013, Juris magister)
and a Swedish LL.M. (2003, Juris kandidatexamen) from Stockholm University. The Article is
based on the Master Thesis in European Intellectual Property Law: The Concept of Genuine Use
of Community Trademarks – Is use in one EU Member State really enough to constitute genuine
use?

2. Genuine use of a Community Trademark … 587
the question to what extent the territorial requirement for a CTM to be genu-
inely used “in the Community” is still appropriate in view of a Community
Market now comprising 28 Member States.5
The European Communities
Trade Mark Association’s (ECTA) observes that “ultimately the choice is polit-
ical.”6
It is submitted that the traditional interpretation of genuine use is no
longer appropriate in view of a Community Market of 28 Member States, and
it is even less appropriate in view of the envisagaed further expansion of the
EU.
In interpreting Article 15 (1) CTMR, I focus on the history of the CTM and
its role in the creation of the Single Market in the EU especially in light of the
fact that one of the intentions behind the CTM system that was to provide
small and medium-sized enterprises (SME) with easy and affordable trademark
protection for the entire EU. A CTM is an efficient tool for competition in the
Single Market. Theoretically, a locally active company can find itself in a situa-
tion where it has to defend itself against another locally active company on the
other side of the EU, due to the fact that one of the companies uses a CTM
with a mere local significance. SMEs, often referred to as “the engine of the
European economy”, represent ninety percent of all undertakings operating in
the Single Market.
There is a tendency for CTM registrations to claim protection for more
goods and services than what is actually needed as a trademark strategy.7 Genu-
ine use of the mark is not subject to any official supervision, nor are applicants
obliged to submit evidence of such trademark use. The policy observed by the
Office for Harmonization for the Internal Market (OHIM) and the history of
the provisions supports the view that as long as the use is genuine, in a commer-
cial sense, after expiry of the five-year grace period, a CTM registration is not in
danger of revocation on grounds of non-use.
The Community legislature’s intention is that the maintenance of rights in a
trademark be subject to the same conditions regarding use in all the Member
States, so that the level of protection does not vary according to the legal system
concerned.8
When the CTMR was adopted the geographical scope of the gen-
uine use requirement was seen as uncontroversial as the EU had only 10 Mem-
ber States:
5 Max Planck Institution for Intellectual Property and Competition law, Study on the overall
functioning of the European Trade Mark System 15.02.2011, p. 269.
6
See ECTA’s reply to the Questionnaire on Trade Mark (TM) functioning in the EU for the
Max Planck Institute. Available at http://www.ecta.org. Last visited 19.12.2013.
7 Pihlajarinne, Taina, What is meant by “genuine use” of a trademark? Nordiskt Immateriellt
Rättsskydd (NIR) 4/2009, p. 348. Article available at http://www.nir.nu/Journal/nir-2009-4.
Last visited 12.12.2013.
8 Joined Cases C-414/99 to C-416/99 Zino Davidoff and Levi Strauss [2001] ECR I-8691, para-
graphs 41–42.

3. 588 L. N. Milenkoviæ
“The Council and the Commission consider that use which is genuine within the
meaning of Article 15 in one country constitutes genuine use in the Community.”9
(Em-
phasis added).
Following the controversial decision from BOIP, the CJEU states in the ONEL
case that genuine use of CTM can be said to occur in a single EU Member
State as “it is not necessary that the mark should be used in an extensive geo-
graphic area for the use to be deemed genuine.” The CJEU held that:
“the territorial scope of the use is not a separate condition for genuine use but one of the fac-
tors determining genuine use, which must be included in the overall analysis and examined
at the same time as other factors.”10
(Emphasis added).
1.2 The aim of the CTM. Genuine use of a CTM plays a vital role because it
warrants an EU-wide right. This should be an indication for a trademark holder
that an assessment should be made of whether a CTM is needed for the purpose
of the business. For example, major Swedish insurance companies have CTMs
but make no use of the CTM outside of Sweden. The relationship between ex-
clusive CTM rights and the Single Market is vital for the Commission’s strategy
on Intellectual Property (IP). The CJEU and the Commission are guardians of
the EU Treaties11
and the Commission’s strategy document for realizing a Sin-
gle Market emphasizes that the need to take the integration project to the next
level, which is “likely to change the playing field for the industry in Europe.”12
Registering trademarks separately in different Member States could cause
problems for the idea of a Single Market if the right holder chooses different
trademarks for different Member States. The market can be divided along terri-
torial boundaries. The right holder can also maintain national registrations for
the same trademark in several Member States and keep out parallel imports put
on the market by the right holder or with his permission in another Member
State.13
The exclusive rights of use of a trademark entitles a right holder to pre-
vent third parties from using identical or similar marks in relation to identical or
similar products without his consent, a principle called “exhaustion”.14
Exhaus-
9 Joint statements by the Council and the Commission of the European Communities entered in
the minutes of the Council meeting, at which the Regulation 207/2009 on the Community
trade mark was adopted on December 20, 1993 (Joint Statement); Cf. inter alia C-292/89 R v Im-
migration Appeal Tribunal, ex parte Antonissen [1991] ECR, (Antonissen), where the CJEU states
that Joint Statements have no binding force for the interpretation of EU law.
10 ONEL, paragraphs 30, 36.
11 See Consolidated version of the Treaty on European Union and the Treaty on the Functioning
of the European union [2010] Official Journal of the European Union (OJ), C 83/01.
12
Granmar, Claes, Intellectual property rights and the single market, NIR 4/2011, pp. 321 [cit.
as Granmar, NIR].
13 Cornish, William / Llewelyn, David: Intellectual Property – Patents, Copyright, Trade Marks
and Allied Rights. London 2007, p. 556 [cit. as Cornish, William / Llewelyn, David].
14 Calboli, Irena, Trademark Exhaustion in the European Union: Community-Wide Or Interna-
tional? The Saga Continues, p. 47, 84; The conclusion on exhaustion is that the CJEU has made
clear that EEA-wide (European Economic Area) exhaustion is the only applicable criterion

4. Genuine use of a Community Trademark … 589
tion plays an important role in European intellectual property law to preserve
the free movement of products protected by IP rights.
The CTM was created to stop these kinds of problems and Recital 2 of the
CTMR states that the creation of the CTM system is intended to facilitate un-
dertakings on the common market and “[a] Community trade mark may be at-
tractive only for those undertakings which are positioning their strategy in the
new technological and marketing environment and which want to match the
new business with the enlarged and unified single market of the Commu-
nity.”15
The aim of the CTM is to improve the functioning of the internal market as
a Single Market, to harmonize the trademark laws of the EU, and to simplify
the application procedures for trademarks.16
2. Community Trademark Law and the Single Market
According to the provisions of the regulatory framework in the CTMR, a
CTM is a single trademark registration procedure consisting of a single applica-
tion in a single language, resulting in a single registration that covers the EU and
any future enlargement. The EU establishes an artificial territory unified by the
membership of those States in one single region. One of the most important as-
pects of harmonized European (or Community) Trademark Law is the possibil-
ity for third parties to seek to revoke a trademark registration on the ground of
non-use once the CTM has been on the register for five years.
The CTM’s unitary character grants exclusive rights on an EU-wide basis in
order to promote the harmonious development of economic activities and a
balanced expansion of the EU. A single procedural system is used to obtain uni-
form protection. Rights are also surrendered, revoked, or invalidated through-
out the entire Community.17 The approach to genuine use of a CTM is seen as
consistent with the principles underlying the CTM system that the EU is a Sin-
gle Market and the CTM is a unitary right effective across EU.18
Based on the
traditional interpretation supported predominantly by OHIM, the requirement
of genuine use may be fulfilled by demonstrating such use in only one EU
Member State. This results in equal trademark protection in all other Member
States because of the mark’s unitary character.
The system of the CTM is a success, but the downside is that if the CTM is
only used in one Member State in the EU, this seems to contradict the purpose
15
Cohen, Jehoram, Tobias, van Nispen, Constant & Huydecoper, Tony, European Trademark
Law: Community Trademark Law and Harmonized National Trade mark Law, Hague 2010,
p. 469 [cit. as Cohen, Jehoram, Tobias / van Nispen, Constant].
16
Cohen, Jehoram, Tobias / van Nispen, Constant, p. 468.
17 R. G. C. Jenkins & Co. Trade Mark and Patent Attorneys, When is use genuine? Article avail-
able at http://www.jenkins.eu. Last visited 12.12.2013.
18
Recital 3 CTMR, Article 1 (2) CTMR.
__________
within the internal market, and national rules providing other exhaustion regimes are in contrast
with Article 7 (1) TMD. Article available at Marquette Intellectual Property Review, Volume 6,
Issue 1, Article 3, at Marquette University Law School. Last visited 19.12.2013.

5. 590 L. N. Milenkoviæ
of the unitary right which is effective in a Union of 28 Member States. The
constantly growing number of CTM registrations could create a barring effect
for new market entrants, not only in the Community but also in all 28 Member
States.19
One of the primary goals for the establishment of the EU has been to create a
Single Market through harmonization, and IP rights have played an integral
role in this development.20 The Trade Mark Directive (TMD), was the first in-
strument on trademarks, and was adopted in 1989. The aim of the TMD was to
harmonize the conditions for registration of a national trade mark and the rights
conferred by such a mark, which most directly affect the functioning of the in-
ternal market.21
The TMD is the legal basis for the national Member States’
trademark legislation defining trademark rights. It provides that the conditions
for obtaining a registered trademark right are nearly the same in all Member
States. It also provides common grounds for refusal of registration, invalidity,
and exhaustion of rights. The TMD does not change the essential character of
national trade mark law, which remains essentially territorial.
The CTMR, adopted in 1993, was the second instrument on trademarks
adopted by the EU legislator. It enables the holder of a CTM to market his
products throughout the Community and to benefit from a single set of rules
on protection. As a regulation, the CTMR has general application, and is bind-
ing in its entirety and directly applicable in all Member States.22 In contrast, a
directive is binding, as to the result to be achieved, upon each Member State to
which it is addressed, but it leaves to the national authorities the choice of form
and methods.
Community Trademark Law is an integral part of EU’s transition to a Single
Market. IP rights are essential elements for the functioning of such a market as
according to Article 118 of the Treaty on the Functioning of the EU. The EU
dimensions of Competition Law and free movement law are interlocked since
IP may essentially affect trade between Member States and Competition Law is
aimed to unlock national markets. European Trademark Law should be under-
stood in the light of the legal framework set by the socio-economic integration
of industrial nations of the EU as envisaged in the EU Treaties. The unification
is a politically fragile project and the idea of a Single Market where free trade
and competition transcends territorial borders is seen as “Europe’s original idea
and unfinished business.”23
Community Trademark Law has three basic principles:
19
Kur, Annette, p. 9.
20 Cornish, William / Llewelyn, David, p. 43.
21 Council Directive No. 89/104/EEC, to approximate the laws of the Member States relating to
trade marks (presently, No. 2008/95/EC, hereinafter referred to as the TMD).
22 MacQueen, Hector / Waelde, Charlotte et al, Contemporary Intellectual Property: Law and
policy, Oxford 2007, pp. 21 [cit. as MacQueen, Hector / Waelde, Charlotte].
23
Granmar NIR, 2011 pp. 321.

6. Genuine use of a Community Trademark … 591
1. Autonomy, as the CTM is subject to European law unless explicit provisions
exist for treatment under national law.
2. Coexistence, Community trademark law does not replace or prevent national
trademark law. CTMs coexist with national trademarks.
3. Unitary character, CTMs are unitary with the same effect within the Commu-
nity.24
The principle of coexistence is one of the core elements. Community Trade-
mark Law co-exists with national trademark law and does not replace national
trademark laws. A CTM is protected for the entire Community and as a result,
it cannot be protected in only one part of the Community.25
All Member States
have their own national trademark system or are parties to a regional trademark
system as observed in Recital 6 in the Preamble to the CTMR. A registration
of a trademark does not grant the right holder a “monopoly” in either the
mark, or the goods or services in connection with the registered mark. It only
gives a monopoly over the use of the mark in combination with the goods or
services for which it is registered. Trademark right holders want as much exclu-
sivity on the market as possible while competitors want the monopoly to be in-
terpreted narrowly so that they can close in on the competitor’s trademarks and
trade.26
3. Is there a need for a CTM?
In the EU it is possible to register a trademark either at the national level by go-
ing to the trademark office of each Member State or at the Community level by
opting for the CTM, which confers upon the applicant a trademark right en-
forceable in all the Member States. The right holder can choose either one or
both of them in parallel. The duration of the CTM is 10 years and may be re-
newed every 10 years.
As of 1 July 2013, Croatia joined the 27 other jurisdictions that make up the
EU. The existing CTM filings will be automatically extended to Croatia with-
out the need for any additional filings or fees. Generally, the cost of filing a
CTM application is less than filing in any three national trademark offices.
There is a need to consider whether a CTM filing is appropriate if a right
holder plans on filing a trademark in one or more of the EU national jurisdic-
tions:
– Will the product or service be distributed in more than one country of the
EU?
24 von Mühlendahl, Alexander, Community Trade Mark Riddles: Territoriality and Unitary
Character, European Intellectual Property Review [cit. as EIPR], Volume 30, Issue 2, 2008,
p. 66.
25 Cf. Granmar, Claes, Varumärkesskydd: en handbok om varumärken och domännamn, Jure,
Stockholm 2003, p. 139 [cit. as Granmar, Varumärkesskydd].
26
MacQueen, Hector / Waelde, Charlotte, p. 540.

7. 592 L. N. Milenkoviæ
– Has a trademark search revealed any issues in any of the EU Member States
that might indicate that the national route is more appropriate?27
In order to obtain a valid registered trademark, an applicant must comply with
the requirements in the CTMR. A CTM, according to Article 9 (1) CTMR,
shall confer upon the right holder exclusive rights that allow him to prevent all
third parties, without his consent, from using the mark in the course of trade.
Article 4 CTMR defines the “objects” that may be eligible for trademark pro-
tection.
In order to obtain trademark protection it is necessary to show that there is:
1. A sign
2. capable of being represented graphically and
3. capable of distinguishing the goods or services of one undertaking from
those of other undertakings.28
Trademarks are also quality indicators and used for advertising of goods and
services.29
3.1 Use or intention to use a CTM. A right holder has the possibility to prohibit
infringing use by others and use is also important with regard to reputation, ac-
quired distinctiveness and genuine use:
1. The more a trademark has obtained a reputation – or the more that it has
been used – the broader scope of protection it enjoys
2. Use is sometimes necessary to obtain protection. A trademark that is not dis-
tinctive from the beginning can only be protected if it is used to such an ex-
tent that it has acquired distinctiveness
3. Use is necessary to keep the right alive and prevent it from being revoked,
genuine use.
Acquired distinctiveness concerns the beginning of the trademark right and gen-
uine use concerns its continuation. Both concepts relate to the existence or validity
of a trademark. Reputation, on the other hand, is about the (possibly enhanced)
scope of protection. For example, if a lot of investment is made, trademark law
protects the reputation of a trademark against detrimental use.30
Distinctiveness is a condition for the existence of a right and its underlying
ratio legis is the public interest, which is seen as the interests of competitors in
case of descriptive marks and the interests of consumers in case of non-distinc-
tive marks. As a general rule, trademark rights are indivisible. It is not possible
27 Lane Powell IP Group, Croatia to Join the European Union – A Bonus for Community Trade-
mark Owners Article available at JD Supra Business Advisor site, http://www.jdsupra.com. Last
visited 15.12.2013.
28 C-206/01 Arsenal Football Club plc v Matthew Reed [2002] ECR I-10273 paragraphs 47–48.
29 C-10/89 SA CNL-Sucal NV v Hag GV [1991] ECR I–3711, paragraphs 13, 16.
30
MacQueen, Hector / Waelde, Charlotte, pp. 539.

8. Genuine use of a Community Trademark … 593
for a mark to exist if it cannot fulfill its distinctive function, even in a small part
of the relevant territory. Reputation can lead to a broader protection and its un-
derlying ratio legis is the protection of goodwill
Traditionally, the fact that a CTM only had to be used in one Member State
to fulfill the use requirement was one of its decisive advantages. Aside from its
statement that “the territorial scope of the use is only one of several factors to be
taken into account in the determination of whether it is genuine or not”,31 the
CJEU has not dealt with territorial aspects of use until ONEL, which dealt with
the question whether the territorial scope of the right concerned has any bear-
ing on the amount of use that is required to constitute genuine use.
A trademark right creates an exclusive right that is sometimes referred to as a
“monopoly”, and as such it is only justified if the mark is actually being used
within a reasonable time frame. Also, the essential function of a trademark is to
be a “badge of origin”.32
The concept of genuine use was designed to reduce
the number of exclusively protected marks, as well as to prevent possible con-
flicts between them. Furthermore, it also requires a demonstration of the real
and effective use of the mark for trading purposes. The ratio legis behind genu-
ine use of a CTM is seen as: “Register what you use and use what you regis-
ter.”
4. Genuine use of a CTM
The ratio legis for the genuine use requirement is to prevent clogging up of reg-
istrations, clearing unused trademarks, and avoiding unnecessary conflicts. The
underlying principle of the use requirement is in Recital 9 TMD.33 A rationale
for genuine use may also exist in Recital 10 CTMR: “There is no justification
for protecting Community Trademarks or, as against them, any trademark
which has been registered before them, except where the trademarks are actu-
ally used.” Gielen clarifies that “it is crystal clear that because both the Directive
and the Regulation concern the same legal notion (of genuine use), the same
rationale is valid for the CTM.”34
The terminology “genuine use in the Community” was adopted in the draft
Regulation of 1984 and has not been changed. The alternative criteria “use in a
substantial part of the common market” and “genuine use within the common
market” were proposed in a working document on the creation of an EEC
trade mark from 1976 but were disregarded without further explanation.35
A
31 Case C-416/04, Sunrider Corp. v OHIM, [2006] ECR I–4237 (Sunrider), paragraph 76. Sunrider
concerned genuine use of an earlier trademark in an opposition proceeding.
32 Case C-40/01, Ansul BV v Ajax Brandbeveiliging BV, [2003] ECR I–2439 (Ansul), paragraph
37; Recital 8 in the Preamble to Directive 2008/95/EC.
33
“In order to reduce the total number of trademarks registered and protected in the Commu-
nity and, consequently the number of conflicts which arise between them, it is essential to require
that registered trademarks must actually be used or, if not used, be subject to revocation.”
34
Gielen, Charles, Genuine use of Community trade mark: where? European Intellectual Prop-
erty Review, Volume 33, Issue 1, 2011, p. 51. Article available at Charles Gielen’s site, http://
www.charlesgielen.com. Last visited 16.12.2013.
35
Ibid.

9. 594 L. N. Milenkoviæ
Joint Statement was issued by the EU Council and the EU Commission stating
that use in one Member State was sufficient to be use within the Community.36
4.1 Cluttering the trademark register. The need to strictly implement the provi-
sions of genuine use is often questioned by trademark right holders. A lower
standard of genuine use would result in a crowded trademark register and an
obstruction to new trademarks which would otherwise have been put to actual
use. According to OHIM non-use can be controlled: “An opposition cannot be
based successfully on such a CTM. Genuine use is therefore of great impor-
tance.”37 OHIM’s view is that there is no cluttering and that the current legal
requirement for proof of genuine use of a CTM has not lead to a large number
of unused CTMs nor has it been an obstacle for new marks.
In OHIM’s view, the CTM “system” itself, through the renewal process,
frees up tens of thousands of trademarks annually. The CTMR also provides for
a specific mechanism to prevent clutter on the OHIM register by bringing can-
cellation actions. If the issue of “clutter” was indeed a serious problem, OHIM
would expect to see a great many more cancellation actions.38
4.2 Register what you use and use what you register. Genuine use usually arises in
the context of trademark infringement, opposition or revocation proceedings.
According to Article 15 (1) CTMR, if a trademark is not put to genuine use
during the first five years of registration, or for any uninterrupted period of five
years, it may become vulnerable to revocation. After this five year grace period,
the right holder may be required to demonstrate use of the mark in connection
with the relevant goods and services. It is sufficient if the trademark is used by a
licensee, Article 15 (3) CTMR, or used for export purpose only, Articles 15 (2)
(b) CTMR. It is also sufficient if the trademark is used in a different form than
the registered one, as long as the changes do not alter the distinctive character of
the trademark.39
Genuine use of a trademark is when the mark is used in accordance with its
essential function, namely, to guarantee the identity of the origin of the goods
or services for which it is registered, in order to create or preserve an outlet for
those goods or services. Genuine use does not mean token use for the sole pur-
pose of preserving the rights conferred by the registration. The use of the trade-
mark must be “real” and not only for the purpose of reserving its right in the
trademark.40
36 Joint statement.
37 OHIM, Contribution to the Study on the Overall Functioning of the Trademark System in
Europe, p. 13. Article available at OHIM’s site http://oami.europa.eu. Last visited 15.12.2013.
38
Smyth, Shane, A Crowded CTM Register. Article available at ECTA, http://www.ecta.org.
Last visited 15.12.2013.
39 Article 15 (1) (a) CTMR; The question of how much the used trademark can actually differ
from the registered one to fulfill the use requirement is outside the scope of this article. On this
particular question, see Kempas, Tobias: Användningstvång och ändringsomfång, NIR 2/2005,
pp. 135–164. Article available at http://www.nir.nu/Journal/nir-2005-2. Last visited 12.12.2013.
40
According to CJEU case law; See the leading case Ansul paragraphs 31, 35–36, 38–39.

10. Genuine use of a Community Trademark … 595
When determining whether certain use of a trademark is genuine or not, all
facts and circumstances relating to the commercial purpose shall be considered,
inter alia, the scale and frequency of use of the mark.41
The volume and fre-
quency of the transactions leading to the use of the mark will be evaluated in
light of the structure of the relevant market. The question whether use is suffi-
cient to maintain or create market share for the goods or services protected by
the mark thus depends on several factors and is made on a case-by-case assess-
ment. The frequency or regularity of the use of the trademark is one of the fac-
tors which may be taken into account.42
4.3 Loss of trademark rights. If a trademark applicant is threatened with opposi-
tion or infringement proceedings by the right holder of an earlier registration,
the applicant may require the opponent to provide evidence of the genuine use
of the earlier mark, to identify both the strength of the threat and whether or
not the applicant could turn and seek revocation of the earlier registration for
non-use. This would be done to clear the way for its own registration/use or to
provide leverage in negotiating a settlement. If a trademark has not been genu-
inely used, it may be unenforceable.43
Use is not included as an absolute ground for refusal in the CTMR, although
sanctions for non-use of the trademark exist in Article 50 (1) (a) CTMR.44
A
trademark can be revoked if it has not been put to genuine use within a contin-
uous period of five years in the Community in connection with the goods or
service for which it is registered, and no proper reasons exist for non-use.
4.4 Genuine use is challenged by the ONEL/OMEL decision. BOIP issued an op-
position decision in 2010 that challenged the traditional viewpoint on what
constitutes genuine use of a CTM. According to BOIP, use of a CTM in a sin-
gle Member State was considered insufficient to constitute genuine use. As the
EU is “territory (currently) covering more than four million square kilometers
and a (current) population of almost 500 million people, use in one Member
State only may essentially boil down to local use only.”45
Leno Merken BV (Leno) with its CTM ONEL filed an opposition at BOIP
against the Benelux trademark application OMEL, both of which were for legal
services. OMEL had been registered by Hagelkruis Beheer BV (Hagelkruis) as a
Benelux service mark in 2009, with the aim to offer its services in Norway and
Sweden. The Benelux application was filed in order to serve as a basis for filing
an international application. Hagelkruis conceded that the trademarks and the
41 Sunrider, paragraph 70; Cf. Article 10 (1) of TMD, a provision which is identical to Article 15
(1) of CTMR, Ansul, paragraph 43 and C-259/02 La Mer Technology v Laboratoires Goemar
SA. [2004] ECR I–1159 (La Mer), paragraph 27.
42 Philips, Jeremy, Trade Mark Use, Oxford 2005, pp. 68.
43
Manches LLP, Genuine trade mark use. Article available at: Penningtons Manches Solicitors
LLP, http://www.manches.com. Last visited 12.12.2013.
44 Cf. Article 12 (1) TMD.
45
ONEL/OMEL, point 34.

11. 596 L. N. Milenkoviæ
services were similar and that if the marks were to be used side-by-side, confu-
sion might result.
The earlier trademark had been registered as a CTM for more than five years,
and Hagelkruis demanded proof of use. Leno provided proof of use in the
Netherlands only. Hagelkruis was not planning to use the OMEL mark in the
Benelux, and the ONEL mark had been used only in the Netherlands.
Hagelkruis claimed that use of the mark ONEL in only one Member State was
insufficient to warrant protection as a CTM.
BOIP rejected the opposition. It held that the CTM ONEL was not put to
genuine use during the five year period prior Hagelkruis’ application for
OMEL. The conclusion of the BOIP states that use in one Member State is not
enough:46
Point 37: Taking everything into consideration, the Office is of the opinion that the
view contained in the Joint Statements stating that genuine use in one single country by
definition results in genuine use in the Community, cannot be maintained.
Point 38: The invoked right is a CTM and parties have admitted that it has only been
used in the Netherlands. The services for which the invoked right is registered are des-
tined at a large public located throughout the entire Community. Use in only the
Netherlands can, given these facts, not be classified as normal use of the invoked right.
BOIP found that ONEL had been registered for legal services in IP and the tar-
get public for those services could be found throughout the entire Community,
but the mark had only been used in the Netherlands, which represents less than
3.5 percent of the EU population. Therefore BOIP did not view the use as suf-
ficient enough to constitute genuine use in the Community.47 Leno appealed
and the Court of Appeal referred questions regarding the interpretation to the
CJEU.
OHIM maintained the traditional interpretation of CTMR, that genuine use
in one EU Member State is sufficient to demonstrate genuine use of a CTM.
OHIM’s view is that the principle of the Single Market would be breached if
the current legislation were to be changed to require use in all Member States.
After BOIP’s ruling, OHIM therefore issued a statement on the BOIP’s rul-
ing.48
46 ONEL/OMEL, points 37–38.
47 ONEL/OMEL, point 38; See comments from BOIP Rapporteur: Vieze, Pieter, Defining the
territorial scope of genuine use, p. 4. Available at IE-Forum Intellectuele eigendom en commen-
taren (Intellectual Property and comments), http://www.ie-forum.nl [cit. as Vieze, Pieter]. Last
visited 15.12.2013.
48
See Press release 27.01.2010 on OHIM site, http://oami.europa.eu. Last visited 19.12.2013.

12. Genuine use of a Community Trademark … 597
5. The geographic extent of a CTM: is use in a single
Member State sufficient?
BOIP proclaimed that a trademark right offers a monopoly. In order to justify
that monopoly and to fulfill its essential function, the mark must be used. A
monopoly that goes (much) further than the territory in which the mark is used
will indeed form an obstacle for the free movement of goods as well as the free-
dom to provide services within the internal market. This is obviously not what
the legislator had in mind. It would be most unjust if an undertaking that only
uses its mark on a local scale could impede the possibilities for other undertak-
ings in the entire territory covered by the internal market.49
The unitary nature of the CTM has been discussed as this question has be-
come a core issue in the debate on the coexistence of the national and Commu-
nity trademark systems, and therefore has a political dimension. Genuine use
within the meaning of Article 15 CTMR in a Member State constitutes “genu-
ine use” in the Community. OHIM has elaborated in its Manual Concerning
Opposition that even use in only one part of a single Member State would suf-
fice as genuine use within the meaning of Article 15 CTMR. The Manual
states that genuine use may be found “when the criteria of that article have
been complied with in only one part of the Community, such as in a single
Member State or in a part thereof.”50
OHIM asserts that “even use in a quite limited area of the relevant territory
might prove to be sufficient” although “in territorial terms, the appropriate
approach is not that of political boundaries but of market(s)” and “that Euro-
pean quantity standards could be different than the respective national criteria in
some cases”.51 OHIM continues to uphold the view that use in one Member
State is sufficient to warrant CTM protection in all of the EU.52
5.1 The PAGO case; the relevance of “reputation in the Community”. In the debate
on whether it is more reasonable to require substantial use of a CTM, relevance
has been sought in the PAGO case, although not directly on point, where the
question referred to the CJEU was whether a CTM is protected in the whole
Community as a “trademark with a reputation” if it has a “reputation” only in
one Member State.
– A CTM must be known by a significant part of the public concerned by the
products or services covered by that trademark, in a substantial part of the
territory of the Community.
– The territory of the Member State in question, Austria, may be considered
to constitute a substantial part of the territory of the Community.53
49
ONEL/OMEL, point 36.
50 OHIM Manual Concerning Opposition, Part 6 – Proof of Use, Chapters 3.1–3.2. Available at
OHIM site, http://oami.europa.eu. Last visited 15.12.2013 [cit. as OHIM Manual].
51
OHIM Manual, p. 9, 12.
52 Upheld in the decision T-209/09 Alder Capital Ltd. v OHIM.
53 C-301/07 Pago International GmbH v Tirolmilch registrierte Genossenschaft mbH [2009] E.C.R. I–
9429 [cit. as PAGO], paragraph 30.

13. 598 L. N. Milenkoviæ
5.2 The relevance of genuine use: should a CTM be used in a larger area? Pago Inter-
national GmbH (PAGO), one of Austria’s largest fruit juice producers, had
been the right holder of a CTM since 2001 showing the characteristic PAGO
fruit juice bottle. Tirolmilch GmbH (Tirol Milch) sold whey based beverages in
Austria under the designation LATTELLA, initially in cartons, then also in glass
bottles. The bottles were similar to the bottle appearing in PAGO’s CTM. Pago
took the case to the Austrian Supreme Court (Oberster Gerichtshof; OGH).
The OGH did not find any likelihood of confusion as the labels of the bottles
in question bore the designations PAGO and LATTELLA, both of which are
highly reputed in Austria. The question arose whether Pago could rely on the
specific protection against taking unfair advantage of the CTM’s reputation.
The OGH took the reputation of the CTM in Austria for granted, but ques-
tioned whether such a region-specific reputation would suffice to qualify the
mark as “having a reputation in the Community” in accordance with Article 9
(1) (c) CTMR. The OGH brought the matter to the CJEU, which agreed with
the position of PAGO. A trademark infringement action could be based on the
specific protection of a CTM with a reputation, even if such CTM is proven to
have a reputation in only one EU Member State.
In this case, the CTM right holder of the PAGO mark exclusively used its
trademark in Austria and the trademark was well known there. The CJEU ruled
that the mark’s reputation in Austria was sufficient to assume that the mark had
a reputation under the CTMR. On the basis that a trademark with a reputation
in one EU Member State was sufficient to find a trademark dilution claim based
on a corresponding CTM, it has been argued that genuine use in one Member
State will also be sufficient to avoid revocation.54
Before ONEL there was no clear authority on whether use in one EU Mem-
ber State is sufficient to constitute genuine use of a CTM. The CJEU did set
out in the ONEL case that “it is reasonable to expect that a Community trade-
mark should be used in a larger area than a national mark”.55
However, in
PAGO the CJEU was considering provisions that are not the same as Articles
10 and 12 TMD. Article 9 (1) (c) CTMR has a different approach and purpose
with “reputation in the Community”. The CTM in question had been the sub-
ject of genuine use, but its reputation was confined to one Member State, Aus-
tria. Article 15 CTMR does not require use in a “substantial part” of the Com-
munity or proof of any “reputation” at all. The sole requirement is “genuine
use in the Community”, and as long as use is genuine in a commercial sense in
the Community the registration is not at risk of revocation on grounds of non-
use.56
54
Morcom, Christopher, Genuine Use in the Community – What Does The CTMR Require?,
EIPR, Volume 32, Issue 7, 2010, pp. 361 [cit. as Morcom, Christopher].
55 ONEL, paragraph 54.
56
Morcom, Christopher, p. 361.

14. Genuine use of a Community Trademark … 599
5.3 ONEL: Is use of a CTM in one EU Member State really sufficient? According to
the BOIP, the limited use in the case does not justify the CTM’s large-scale and
exclusive right. The CJEU asked the question in ONEL: what use is enough to
constitute genuine use?
The parties Leno and Hagelkruis were in agreement that:
1. the Marks were similar;
2. the respective services of the applied mark/earlier mark were identical or
similar; and
3. the similarities were such as to give rise to a likelihood of confusion.
The remaining dispute was whether or not Leno was obliged to demonstrate
use of its CTM ONEL in more than one Member State. The Hague, the Neth-
erlands Regional Court of Appeal, asked the CJEU for a ruling on four ques-
tions.
The CJEU reformulated the questions as whether Article 15 (1) CTMR to
be interpreted as meaning that genuine use of a CTM in a single Member State
was sufficient to satisfy “genuine use” or were territorial borders to be disre-
garded.
5.4 Territorial borders of Member States must be disregarded in determining use. A
CTM is put to genuine use within the meaning of the Article 15 CTMR when
it is used in accordance with its central function and for the purpose of main-
taining or creating market share within the European Community. On the basis
of the decisions in the Ansul, La Mer and Sunrider cases, genuine use is seen as an
autonomous concept and seen to guarantee the identity of the origin of the
goods or services for which it is registered in order to create or preserve an out-
let for those goods or services. Token use is not enough for genuine use.
The CJEU based its opinion on article 1 (2) CTMR in connection with Re-
cital 3 of the CTMR. From this provision it follows that the purpose and the
objective of the CTM is to remove the barrier of territoriality of the rights con-
ferred on proprietors of trademarks, by the laws of the Member States.
The CJEU took the view that such objectives would be blocked and it
would interfere with the unitary character of the CTM if territorial borders of
the CTMs would be given a particular significance in the CTMR. It is there-
fore impossible to establish what territorial scope should be chosen in order to
determine whether the use of the mark is genuine or not. It is for the referring
court to assess whether the requirements are fulfilled.
The CJEU emphasized that the purpose of a CTM is to offer conditions in
the internal market that are similar to those obtainable in a national market. It
would be detrimental to the unitary character of the CTM if the territories of
Member States were given particular significance. The CJEU further stated that
the territorial borders of the Member States should be disregarded considering
this purpose and the wording used in the CTMR “in the Community”.

15. 600 L. N. Milenkoviæ
6. Concluding remarks on genuine use in the Community
The CJEU decision does not bring clarity to all aspects of use of CTMs, and the
Court ruled that it should be left to the nation court assessing “all the facts and
circumstances relevant to the main proceedings, including the characteristics of
the market concerned, the nature of the goods or services protected by the
trademark and the territorial extent and the scale of the use as well as its fre-
quency and regularity.”57
It might have been easier if the Court had set a more definite rule on the ter-
ritorial extent of use of a CTM, and adopted the Commission’s position that all
discussions concerning that the geographic extent of CTM use is contrary to
EU law and irrelevant. The ONEL decision sees the territorial extent as just an-
other criterion for the assessment of genuine use. The lack of policy guidelines
can create different national interpretations of when use is genuine, where An-
sul still sets the guidelines.58
The CTM was created to give to companies the possibility of approaching
the Single Market. If the CTM it only used in one Member State in a Union of
28 Member States where Malta has 300,000 inhabitants and Germany 83 mil-
lion, this is inconsistent with the purpose of the CTM.59
ONEL is the first CJEU case in which the question of the minimum geo-
graphical scope of use has been discussed in-depth and the result is that there is
no arbitary rule on territorial scope: “The territorial scope of the use is not a
separate condition for genuine use but one of the factors determining genuine
use, which must be included in the overall analysis and examined at the same
time as other factors”.60 Consequently, the term “in the Community“ is aimed
at defining the geographical market, and serves as the reference point for any
consideration of whether a CTM has been put to genuine use.
A more balanced view, in the spirit of enhancing the attractiveness of the
CTM and the competitiveness of the Single Market, is required. The debate on
the question of geographical extent shows that the question is highly politi-
cized. There is need to overcome this and give SMEs priority in all aspects of
market regulation. For example, a trademark used solely in Malta with only a
local significance can obstruct another European undertaking from accessing the
Community market, as a CTM could block other registrations throughout the
entire EU. The concept of genuine use is supposed to prevent registrations of
trademarks that would not actually be used and in consequence would restrict
57 ONEL, paragraphs 55–56, 58; A CTM is put to ‘genuine use’ within the meaning of Article
15 (1) CTMR when it is used in accordance with its essential function and for the purpose of
maintaining or creating market share within the (European) Community for the goods or services
covered by it.
58
Criteria in the assessment of genuine use: Ansul, paragraph 43; Cf. ONEL, paragraph 58:
“taking account of all the relevant facts and circumstances, including: the characteristics of the
market concerned; the nature of the goods or services protected by the trade mark; the territorial
extent; the scale of the use as well as its frequency and regularity”. (Emphasis added).
59 Kondrat, Scholz, The real deal: the concept of genuine use. Available at WIPR site http://
www.world-ipreview.com. Last visited 15.12.2013.
60
ONEL, paragraph 36.

16. Genuine use of a Community Trademark … 601
the free movement of goods and services, as well as obstruct competition by
limiting the range of marks which can be registered as trademarks.
An open assessment is to be preferred with a more market based approach,
having in mind all relevant factors whether such use is genuine with an assess-
ment of inter alia the abovementioned possibility of blockage of market access,
EU’s enlargement, the size of certain Member States, the availability of national
trademark systems, the development of trademarks, goods and services as well as
of markets.
Even though national boundaries are not relevant, it will now be important
to define the market, and particularly its territorial scope, in order to make cer-
tain that the CTM is used as extensively as possible within that particular mar-
ket. In the Single Market, and given the unitary character of the CTM, national
borders are irrelevant and should not be taken into account. As the Ansul case
indicated, all the characteristics of the market concerned must be taken into account
and the size of that market is of course a relevant and important characteristic –
whether they are geographic, economic, sociologic, or demographic, these fac-
tors should be taken into account on a case-by-case basis.
I would like to conclude the article with the words of the Italian Attorney
Angelini and ECTA representative on the subject:
“The CTM was created to give to companies the possibilities to avail themselves of the
EU Common Market, if you’re not using the CTM in more than one, then you are not
using the Common Market.”61
61 ECTA, European Union – Users cannot provide a united front against European challenges.
Article available at http://www.ecta.org. Last visited 15.12.2013.