The day after the decision in the case Onel. A good moment for reflection. And to learn the most important lessons from the decision.
Our conclusion is that the Court of Justice rendered a crucial decision. As expected, borders of Member states do not play a role in the assessment of genuine use. So you cannot say that an European trademark has genuinely been used in the event it is used in 3, 5 or 8 countries. This use depends on the market, the circumstances of the case etc. So, use in one country can therefore be sufficient.
However, and now it becomes interesting, the Court states that there is admittedly some justification for thinking that a Community trade mark should be used in a larger area than the territory of a single Member State because it enjoys more extensive territorial protection than a national trade mark. Having said that, use in a country may be sufficient, but only if certain circumstances are present.
Unfortunately, the Court does not indicate what these circumstances are. However, MarkMatters.com thinks of niche markets. For example, ice skates whereas the market is mainly the Netherlands. Of course, these circumstances will need to be crystallized in future decisions.
Summarizing, when the Onel-case begun, use of an European trademark in one country was anyway sufficient. Now, the Court of Justice does not exclude the possibility that use in one country can be sufficient but it seems that these cases where this use will suffice, are limited. A good time for holders of European trademarks to reconsider their portfolios and to look where they can be confronted with difficulties in order to maintain these rights.
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