Confusion over meaning of Genuine Use in the UK

Whether use of a trade mark in just one Member State is sufficient or not to support the validity of a Community Trade Mark (CTM) (which has effect in all 28 Member States of the EU) is an issue practitioners and the Courts have struggled with since the CTM system began over 20 years ago. Many had thought this was conclusively settled by the Court of Justice of the European (CJEU) in their decision in ONEL back in 2012. Yet MINT, one of the first UK IPO decisions issued this year, highlights the UK Intellectual Property and Enterprise Court interpretation of ONEL in SOFAWORKS and shows that there are still conflicting interpretations on this point when it comes to use of a CTM in the UK.

In MINT, RBS had opposed a trade mark application for the mark MINT. To support the opposition based on their CTM for MINT RBS were required to show that they had in fact made “genuine use” of the mark in respect of the goods or services for which it is registered. One aspect at issue in such an assessment is where that use must have been. In respect of UK trade mark registration it is uncontroversial that the use must be in the UK. However, for a CTM registration the fraught issue has centred around whether use in the UK alone would satisfy use in the Community, or whether use would have to extend further into the broader Community.

In ONEL the CJEU was clear in saying that “the territorial borders of the Member States should be disregarded in the assessment of whether a trade mark has been put to ‘genuine use in the Community’”. This was interpreted by most as meaning that the test must be about the market in question rather than simply state borders as was a step back from the black and white position that use in one Member State is (assuming other criteria met) enough but it none the less did not rule out that if the market were such then use in one Member State could still be enough.

The Hearing Officer in MINT highlighted the interpretation of this ruling by the IPEC judge in SOFAWORKS in which it was said: “If I am right about the effect of the Court's judgment, it means that there is a distinction between national marks and Community marks when it comes to assessing genuine use. For national marks the geographical extent of use is a factor to be taken into account, but it is apparently of no great weight – see Sunrider. In respect of Community marks the geographical extent of use is, in the general run, crucial: it must extend at least beyond the boundaries of one Member State. By way of a non-exhaustive exception to the general rule, this does not apply where the market for the goods or services is confined to one Member State.” The Hearing Officer noted in contrast that “OHIM has not interpreted the CJEU’s judgment [in ONEL] as introducing a default requirement that use of CTMs must cross national boundaries in order to be considered as genuine use in the Community” and that the General Court in NOW WIRELESS had “expressly rejected a requirement for use of CTMs to cross national boundaries”. As such he stated: “consequently, in trade mark oppositions and cancellation proceedings the Registrar will, …, continue to entertain the possibility that use of a CTM in an area of the EU corresponding to the territory of one Member State may be sufficient to constitute genuine use of a CTM. This will apply even where there are no special factors, such as the market for the goods/services being limited to that area of the EU”. The HEARING Officer held, on the facts in this case, that although all the evidence pointed to use in just the UK, that this was satisfactory to support a CTM registration.

This “is one Member State enough” has been a difficult issue conceptually as it forces empirical practical reality to clash with theoretical and political ideas and the nature of the CTM as a unitary right across 28 distinct countries. Brand owners, especially those in the UK, will welcome this stance on this point by the UKIPO and the factual guidance it gives.

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