Sep/Oct. 2020 English version of the Swedish article on European Use of Trademarks published in the IP magazine BrandNews. Update includes added legal research and input from presentations held at IP law firms and organizations.

1. TRADEMARK USE – THE EUROPEAN PERSPECTIVE
By Leonard Neno Milenkovic
The EU Trademark (EUTM)∗∗∗∗ was created to give to companies
the possibility of approaching the European Single Market. If
the EUTM it only used in one Member State of the European
Union (EU), where Malta has 300,000 inhabitants and
Germany 83 million, it is inconsistent with the purpose.
The system of the EUTM is a success, but the constantly growing
number of EUTM registrations could create a barring effect for
new market entrants, not only in the Community but also in all of
EU.1
Trademarks as a way to compete on the European Market
What actually constitutes genuine use and how the requirements
should be interpreted is a current and controversial issue, especially
the geographical extent of use.2 A EUTM must be put to use in the
Community during the first five years of registration in accordance
with Article 15 Community Trademark Regulation (EUTMR).3 A
* A new Community Trademark Regulation (EUTMR) will also come into force,
with the changes being effective by April 2016 (at which point EUTMs will
change name and become European Union Trademarks, EUTM).
1
See Milenkovic, Leonard Neno, Genuine use of a Community Trademark. How
to interpret use “in the Community”, Nordiskt Immateriellt Rättsskydd (NIR)
2013 s. 586 [Milenkovic], Kur, Annette, Open Questions After ONEL/OMEL:
What Kind of Use is This? IPR info.
2
Case C-149/11 Leno Merken BV AG v Hagelkruis Beheer BV [ONEL].
3
Council Regulation (EC) No 40/94 on the Community Trade Mark (presently
No. 207/2009, referred to as the EUTMR).

2. 2
trademark can be revoked if it has not been put to use. The Single
Market, free movement of goods, is one of the cornerstones of the
EU, and for a country like Sweden it is crucial to have access to the
Single Market. EUTMs have a unitary effect throughout the EU,
which means that goods and services are distinguished by identical
means throughout the entire Community.
The purpose is to offer conditions on the internal market which are
similar to those obtaining in a national market.4
Genuine Use – General Principles in the EU
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, and the use
of the trademark must be “real” and not only for the purpose of
reserving its right in the trademark.
Even minimal use may qualify as genuine use if it is the sort of
use that is appropriate in the economic sector concerned according
to case-law.5
The use must be by way of real commercial exploitation of the
mark on the market for the relevant goods or services, i.e.
exploitation that is aimed at maintaining or creating an outlet for
the goods or services or a share in that market.6
There may be valid reasons for when the trademark has not been
used. Use of a different form which do not alter the distinctive
character and use by another with consent can also be genuine.
The European Council and the European Commission issued a
Joint statement 1993 on the geographical scope of the genuine use
requirement, i.e. genuine use in the Community:
4
ONEL, paragraphs 40 and 42.
5
If the commercial exploitation of the mark serves to create/maintain market
shares: C-40/01 Ansul BV v. Ajax Brandbeveiliging BV, 2003 s I-02439
[Ansul], C-259/02 [La Mer Tech] och C-416/04 [Sunrider].
6
In doctrine seen as the products for which the mark is registered are marketed
in normal activities towards the public.

3. 3
“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.”7
The European Union Intellectual Property Office (EUIPO)
maintained the traditional interpretation of the EUTMR that
genuine use in one EU Member State is sufficient to demonstrate
genuine use of a EUTM in opposition and revocation proceedings.
Background to the ONEL case
- The geographical scope of genuine use is challenged in Benelux
Hagelkruis Beheer wanted to register OMEL as a Benelux service
mark in 2009. Leno Merken with its EUTM ONEL since 2003 filed
an opposition against the Benelux trademark application OMEL,
both of which were for legal services.
Hagelkruis Beheer claimed that 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 EUTM, and Hagelkruis demanded proof of use.
The Benelux Office for Intellectual Property (BOIP) rejected
Leno Merken’s opposition. It held that the EUTM 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 for such an extensive right:
“[EU] 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.”
“The invoked right is a EUTM and parties have admitted
that it has only been used in the Netherlands. The services for
which the invoked right is registered are destined 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.”8
7
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 Statements].
8
Decision No. 2004448 of Belgium, Netherlands and Luxembourg (Benelux)
Office for Protection of Intellectual Property (BOIP), Intellectuele Eigendom en

4. 4
Location of Use
– Is use of a EUTM in one EU Member State really sufficient?
The remaining dispute was whether or not Leno Merken was
obliged to demonstrate use of its EUTM ONEL in more than one
Member State. The Hague, the Netherlands Regional Court of
Appeal, asked the Court of Justice of the European Union (CJEU)
for a ruling on four questions. The CJEU reformulated the
questions as whether Article 15 (1) EUTMR to be interpreted as
meaning that genuine use of a EUTM in a single Member State was
sufficient to satisfy “genuine use” or were territorial borders to be
disregarded?
After the ruling by the CJEU, the territorial scope of the use is
now only seen as one aspect in the assessment of genuine use, use
in one country may be enough but will not automatically be.
According to the “Single Market” theory and given the unitary
character of the EUTM, national borders are irrelevant and should
not be taken into account. 9 What now seem to be the crucial point
is to define what creates or maintains a market share for the mark
on the market.10 All the characteristics of the market concerned
must be taken into account in national interpretations of when use
is genuine, where the Ansul case still sets the guidelines.11
“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”.12
Reclamerecht 2010/29 [ONEL/OMEL], points 34, 37-38; the Joint Statements
stating that genuine use in one single country by definition results in genuine use
in the Community, cannot be maintained.
9
See Max Planck Institute Study on the overall functioning of the European
trade mark system, 2011-02-15, p. 47, [Max Planck Institute Study].
10
ONEL, paragraph 29.
11
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.”
12
ONEL, paragraphs 30, 36.

5. 5
Genuine Use – register what you use and use what you register
Trademarks should be used in an efficient way to further
competition. The reason behind the requirement to use trademarks
is to prevent clogging up of registrations, clearing unused
trademarks, and avoiding unnecessary conflicts.
Genuine use is a protection against trademarks registered only in
order to secure or expand the protection of another registered
trademark.
There is a possibility to register trademarks that are meant to be
used de facto in the future “while (unwanted) defensive
registrations barely are meaningful in the use requirement it is
essentially important to be able to register offensively […]
It can be meaningful to have the trademark right ready, before
entering the market”.13
Examples when it is sufficient with use in one member state
There exists an exception to the genuine use essentials. The
exemption relates to exceptional circumstances where the market
for goods and services is only restricted to a particular territory. An
example is a trademark that covers sour herring and that has only
been exploited in Sweden who is prominent in this market sector.∗
My conclusion is if the relevant market is wider in its scope – for
example financial services – it would be difficult to claim that the
use of a EUTM in only one member state is sufficient for genuine
use in the EU.
Concluding remarks
Theoretically a trademark used solely in Malta with only a local
significance can obstruct another European undertaking from
accessing the European market, even though the Maltese EUTM
only needs protection in a specific geographical area.14
13
Levin, Marianne, Lärobok i immaterialrätt (Textbook on Intellectual Property
Law), p. 406, 10 ed., Nordstedts Juridik, Stockholm 2011.
∗∗∗∗
At the end of August, Swedes open bulging tins of smelly, fermented herring
for a special feast. The owners of the trademark will have to ensure that their
brands are put to actual use in terms of sale and business operations to prevent
their trade mark revoked.
14
See Milenkovic.

6. 6
Since use in one country may be enough, a very broad protection
for trademarks is possible according to the Max Planck Institute
Study. There is a risk of different national interpretations when use
is genuine of trademarks in the geographic extent which is
important to illuminate.
Very limited commercial use has so far been enough in EU case-
law which can be set against national interpretations where
substantial volumes of use in commerce can be required.
A low requirement enables defensive trademark registrations and
a substantial commercial requirement may hinder small companies
to compete on equal terms, which would counteract the very
purpose of the European trademark.
There is a tendency to claim a EUTM with a protection for more
goods and services than what is actually needed as a trademark
strategy, even though one or more national trademarks would
suffice. 15 A silver lining exists for the trademark owners who have
not used their marks in more than one country; to convert a EUTM
application to national registrations.16
In conclusion, 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 certain that the EUTM is used as
extensively as possible within that particular market. The view that
the EUTM should be used in a wider geographical area than the
national trademark is consistent with the purpose of the EUTM, to
give companies the possibilities to avail themselves of the EU
Single Market.17
Leonard Neno Milenkovic, LL.M. European Intellectual Property
Law. The article is based on the Master Thesis: The Concept of
Genuine Use of Community Trademarks – Is use in one EU
Member State really enough to constitute genuine use? and
research on EU Trademark Use, i.a. article in Nordiskt Immateriellt
Rättsskydd (Nordic IP Protection Journal) Genuine use of a
Community Trademark. How to interpret use “in the Community”.
15
Pihlajarinne, Taina, What is meant by “genuine use” of a trademark? NIR
2009, p. 348.
16
Article 112 (2) (a) EUTMR.
17
ONEL, paragraph 54; This aspect is seen by the CJEU as “reasonable”, “it is
reasonable to expect that a Community trade mark should be used in a larger
area than a national mark”.