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ONEL edges closer to resolution as Hague Court pops the questions

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

Does use of a Community trade mark in just one of the 27 Member States count as "genuine use" of that trade mark and, if so, in what circumstances will it do so? This question is now a little bit nearer resolution than it was before.  Thank you, Camille Janssen (Benelux Office for Intellectual Property) for sending the IPKat this handy, if admittedly unofficial, translation from the original Dutch of the final form of the wording of the questions referred last week by the Hof Den Haag to the Court of Justice of the European Union (ECJ) for a preliminary ruling in Case number: 200.057.983/01 (ONEL/OMEL, on which please refer to earlier IPKat posts here, here, here and here, among others):

"Questions referred for a preliminary ruling

18. ... the Court feels that it is necessary to refer the following questions to the Court of Justice of the European Union for a preliminary ruling:

1. Should Article 15(1) of Regulation (EC) no. 207/2009 on the Community Trade Mark be interpreted in such a manner that it is sufficient, in order to qualify as genuine use of a Community trade mark, for that trade mark to be used within the frontiers of a single Member State, provided that this use, if it concerned a national trade mark, would qualify as genuine use in that Member State (cf. Joint Statement no. 10 on Article 15 of Council Regulation (EC) no. 40/94 dated 20 December 1993 and the OHIM?s Opposition Guidelines)?

2. If Question 1 is to be answered in the negative, does such use of a Community trade mark within a single Member State as described above not in any instance qualify as genuine use in the Community as defined in Article 15(1) of Regulation (EC) no. 207/2009?

3. If use of a Community trade mark within a single Member State does not in any instance qualify as genuine use in the Community, to what requirements ? in addition to other factors ? should the territorial scope of the use of a Community trade mark be subject for purposes of determining genuine use in the Community?

4. Alternatively, should ? in deviation from the assumption used above ? Article 15 of the Council Regulation on the Community Trade Mark be interpreted in such a manner that determination of genuine use in the Community is made wholly independent from the frontiers of the Member States? respective territories (and for example market shares (product/geographic markets) be taken as a point of reference)?

Decision

The Court:
- requests the Court of Justice of the European Union to rule on the questions set out in par. 18 on the interpretation of the Regulation and Directive specified above;
- defers all further judgment and suspends these proceedings until the Court of Justice
of the European Union has ruled on those questions.

This judgment was handed down by J.C. Fasseur-van Santen, A.D. Kiers-Becking and M.Y.
Bonneur, and was pronounced in open session on 1 February 2011, in the presence of the
court registrar".

Says Merpel, this is one ruling from the ECJ which will be of genuine use to trade mark owners and their professional representatives ...

Full post as published by IPKat on February 06, 2011 (boomark / email).