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The Onel vs Omel trade mark dispute

Written by Jean-Michel Omanga on 14 December 2010

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Halgelkruis Beheer BV applied to register the word sign OMEL at the Benelux Office for Intellectual Property for goods and services (BOIP). Halgelkruis planned to use the trade mark OMEL in Scandinavian countries. Leno Merken B. V. was the proprietor of an earlier CTM, ONEL registered for goods and services. Leno Merken had operated as a firm for over 40 years only in the Netherlands, offering its services under the trade mark ONEL.

The legal question is to know if the earlier Community trade marks have to be used in more than one of the 27 Member states in order to establish genuine use of that mark?

The Court of Appeal of the Hague has suggested referring the following complex questions to the Court of Justice of the European Union for a preliminary ruling:

Should article 15(1) of the Community Trade Mark regulation be interpreted in such a way that the use of a trade mark within the borders of one Member State is sufficient, provided that this use. If the trade mark would be a national trade mark, would be considered to be normal use in that Member State.

If no, is use within one Member state never normal use within the European Community as referred to in Article 15 of the Community Trade Mark regulation? If yes, which requirements are applicable with regard to the territorial scope of the use of a trade mark apart from the other circumstances to assess a normal use within the Community?

If the answer to question 1 should be in the negative, should the assessment of normal use within the Community be abstracted from the borders of the territory of the separate Member states and solely linked up with the market shares of the trade mark on the various markets within the Community?

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