A spate of recent rulings delivered by the Courts of the European Union spell out the methodology for assessing whether a name, word, symbol or a graphic representation is a trademark.

There is no need for the trademark to be used in an extensive geographic area for it to be deemed genuine

A trademark is a recognisable sign or expression that identifies products or services of a particular source from those of others. This distinguishing feature is crucial in the marketing of one’s product since consumers generally identify commodities by the mark placed on a product. In order to register a trademark, the owner is entitled either to register it at national level or obtain a Community registration.

National registered trademarks have to be used on the goods and services they cover in the country in question within a number of years after registration. Likewise, Community-registered trademarks have to be put to genuine use for a continuous period of five years after registration. The question that has been the subject matter of the much-awaited decision of the Court of Justice of the European Union in the Onel case relates to the extent of use at EU level necessary to satisfy this legal requirement and, particularly, whether use in one member state is sufficient.

There was a belief held by many that a registered trademark only had to be used in one member state to remain valid. This interpretation favoured trademark owners who were not required to use a mark in all 27 EU countries to benefit from the broad protection of a Community-registered trademark. This was challenged before the Court of Justice that had to consider whether genuine use of a Community trademark in a single member state was sufficient to satisfy the requirement for genuine use in the Community.

The case revolved around the European Community trademark Onel. Leno, the owner, opposed a later application by Hagelkruis to register the word ‘Omel’. Hagelkruis requested that Leno furnish proof of use of the trademark and in response, Leno provided proof of use in only one EU member state, the Netherlands.

The court stated that a Community trademark registration allows a trademark owner to carry on activities throughout the EU without consideration of national borders. Following on from this, it ruled that the territorial borders of countries have to be disregarded when considering whether a Community trademark has been put to genuine use in the Community. Yet, use of a Community trademark in a single EU member state may not necessarily be sufficient, although it cannot be ruled out that, in certain circumstances, use in the territory of a single member state could satisfy both the conditions for genuine use of a European Community trademark and genuine use of a national trademark. As a rule, there is no need for the trademark to be used in an extensive geographic area for it to be deemed genuine, as territorial scope is just one factor in the overall assessment a national court must carry out to determine genuine use.

In another landmark decision, the General Court dealt with whether use of the composite trademark Fruit of the Loom constituted genuine use of the trademark Fruit alone. Views differed from country to country on whether this was the case or not. The proprietor of the Fruit of the Loom mark showed substantial use of that mark in various forms and, additionally, provided some use of Fruit alone, including extracts from its website www.fruit.com which had been active since 1995.

The court, however, held that the phrase Fruit of the Loom was indivisible and the phrase could not be reduced to the single element Fruit.

Although the word Fruit was a dominant element of the composite mark, the word Loom was equally important. As a result, the owner of the Fruit of the Loom mark was not capable of establishing genuine use of the word Fruit separately and independently of the composite mark Fruit of the Loom.

It is common practice to slightly develop trademarks over time, by adding certain elements or modernising the mark. This was the matter at issue in the Proti case. The court considered whether the use of the trade-mark Proti in the form of Protiplus and Proti Power altered the distinctive character of the word Proti, an earlier registered mark.

The court held that though slightly different, the use of the registered trademark Proti Power may at the same time be acknowledged as genuine use of the predominant element Proti.

Notwitstanding these clarificatory rulings, challenges by applicants of new marks and oppositions by registered trademark owners are far from subsiding in the ever-evolving interpretation of Community trademark law.

jgrech@demarcoassociates.com

Josette Grech is an associate with Guido de Marco & Associates and heads its European law division.