Class 46 has learned of some important amendments to OHIM's Manual of Trade Mark Practice which -- unlike many earlier amendments -- came into effect immediately upon their publication. These amendments were necessitated by the ruling of the Court of Justice of the European Union in Case C-149/11 ‘Leno Merken’, better known to many readers as the ONEL case:
of Trade Mark Practice
The following has been amended:
C: Opposition. Part 6: Proof of Use
The Manual of Trade Mark Practice on Proof of Use has been modified to align it
with the judgment of the Court of Justice in C-149/11 ‘Leno Merken’. The
revision only affects Section II.4.1- Use on the “domestic” market and Section
II.4.2 - CTMs: use in the European Union. The changes will enter into force immediately
The amendments to Section II.4-1 look like this:
4. Place of use
4.1. Use on the “domestic” market
Trade marks must be used in the territory where they are protected (European Union for CTMs, the territory of the Member State
in the case of for national marks or Benelux in the case of for Benelux marks and the territories of the relevant countries for international registrations).
The General Court has held that genuine use means that the mark must be present in a “substantial part” of the territory where it is protected (judgment of 12/12/2002, T-39/01, ‘Hiwatt’, para. 37). However, even use in a quite limited area of the relevant territory might prove to be sufficient, provided it is to be considered as genuine, taking into account all the relevant factors of the specific case. As the Court held in ‘Leno Merken’ ‘ Vitafruit’; ‘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’ (judgment of 19/12/2012, C-149/11 ‘Leno Merken’, para. 30). The Court further indicated that use of the mark in non-EU territories cannot be taken into account (para. 38 11/05/2006, C-416/04, ‘Vitafruit’, para. 76).
In view of the globalisation of trade, an indication of the registered seat of the owner of the mark may not be regarded as sufficient indication that the use has taken place in that particular country. Even though Article 15(1)(b) CTMR stipulates that the affixing of the trade mark to goods or to the packaging thereof in the European Union solely for export purposes is considered as use of the mark, mere indication of the opponent’s seat as such does not constitute evidence of such acts. On the other hand, the fact that clients having their seats outside the relevant territory are listed in the documents to prove use of the earlier mark is in itself not sufficient to exclude that services (e.g. promotion services) may actually have been rendered in the relevant territory for the benefit of these companies located in other territories (decision of 09/06/2010, R 0952/2009-1, ‘Global Tabacos’, para. 16).
The amendments to Section II.4-2, which are more extensive, run as follows:
4.2. CTMs: use in the European Union
If the earlier mark is a Community mark, it must be used ‘in the Community’ (Articles 15(1) and
Article 42(2) CTMR). Following ‘Leno Merken’, Article 15(1) CTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether a CTM has been put to “genuine use” in the Community (para. 44).
Genuine use within the meaning of Article 15 CTMR may be found also when the criteria of that article have been complied with in only one part of the EU, such as in a single Member State or in a part thereof. In territorial terms and in light view of the unitary character of the CTM, the appropriate approach is not that of political boundaries but of market(s). Any other rule would discriminate between large and small and big enterprises, and thus be contrary to the aim pursued by the CTM system, which should be open to businesses of all kinds and sizes.
As the Court indicated in ‘Leno Merken’, it is impossible to determine a priori, and in the abstract what territorial scope should be applied in order to determine whether the use of the mark is genuine or not (para. 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and the scale of the use as well as its frequency and regularity (para. 58).
The Office must determine on a case-by-case basis whether the various indications and evidence, taken as a whole, can be added up for the purpose of assessing the genuine character of use, the geographical dimension of which is only one of the aspects to be considered.
The sufficiency of use in only a part of the European Union is reflected in the Joint Statements by the Council and the Commission entered in the minutes of the Council meeting at which the CTMR was adopted (Joint Statements by the Council and the Commission of 20/10/1995, No B. 10 to 15, OJ OHIM 1996, 615). According to these statements, “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”. While these statements have only an interpretative value and are not legally binding, they have been applied by the Office.
It must iIn any event, it must be underlined that it is the European requirements or standards for genuine use which apply (i.e. the conditions of Article 15 CTMR) and not the national standards or practices applied to CTMs.
Please update your records -- and your practices -- accordingly.