The Onel Case

All spotlights were on Onel trademarks as it was involved in a ground-breaking case closely followed by the media, businesses and legal experts.

What went before

It all began when Hagelkruis, a Dutch company, filed its trademark OMEL. It was opposed by Onel trademarks on the basis of its European trademark ONEL. Hagelkruis took the view that Onel trademark had to furnish proof of use of its European trademark in more than one country, claiming that use of the trademark in the Netherlands alone was not sufficient. Onel contested this, based on current legislation.

The Benelux Trademarks Office decided in favour of Hagelkruis. Onel trademarks appealed and the Court of The Hague referred the case to the Court of Justice for clarification.

The prejudicial question

The question submitted to the Court of Justice was, in essence, whether use of a European trademark, which spans 27 countries, constituted “genuine use in the European Union” when used in a single country. While the European trademarks office generally accepted that use in a single country sufficed, this had never been confirmed by a European judge.

Decision of the Court of Justice

The Court of Justice ruled that the territorial borders of Member States play no role in the assessment of genuine use. Rather, use depends on the market or the circumstances of the case. Use in a single country may therefore also suffice.

The Court admitted however that there was some justification for thinking that a Community trademark should be used in an area that extends beyond the territory of a single Member State. That is because it enjoys protection in a larger area than a national trademark. But in some cases it is possible to restrict the use to a single country, depending on circumstances. That could be a niche market covering the territory of a single Member State, for instance.

The consequences

When the Onel case began, use of a European trademark in a single country was sufficient. Since its ruling, it is clear that the Court of Justice does not exclude use in a single country, but that such cases are limited.

The ruling is sufficient reason to reconsider existing filing strategies. Sometimes, it is better to file a national application as this provides adequate protection.

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