Opinion of the Advocate General — ECLI:EU:C:2012:422
Date: 2012-07-05
Language of the case: Dutch
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Reference for a preliminary ruling
Origin: Netherlands

Summary — Judgment of the Court (Second Chamber), 19 December 2012 1. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Meaning — Criteria for assessment (Council Regulation No 207/2009, Art. 15(1); European Parliament and Council Directive 2008/95, Art. 10(1)) 2. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Meaning — Criteria for assessment — Territorial scope of use (Council Regulation No 207/2009, Art. 15(1)) 3. EU law — Interpretation — Acts of the institutions — Statement recorded in Council minutes — Whether taken into account — Not permissible where no support in the act itself 1. There is genuine use of a Community trade mark, for the purposes of Article 15(1) of Regulation No 207/2009 on the Community trade mark, where the mark is used in accordance with its essential function and in order to create or maintain market shares in the European Community for the goods or services designated by the mark. It is for the referring court to assess whether the conditions are met in the main proceedings, taking account of all the relevant facts and circumstances, such as, for example, the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and the scale of the use as well as its frequency and regularity. Thus, the interpretation of the concept of genuine use given by the Court in relation to national trade marks may be applied by analogy to Community trade marks since, in requiring that the trade mark be put to genuine use, Directive 2008/95 to approximate the laws of the Member States relating to trade marks and Regulation No 207/2009 pursue the same objective. It follows both from recital 9 to the directive and from recital 10 to the regulation that the EU legislature intended to make the preservation of the rights connected to the national or Community trade mark conditional upon it actually being used. Thus, a Community trade mark which is not used could obstruct competition by limiting the range of signs which can be registered as trade marks by others and by denying competitors the opportunity to use that trade mark or a similar one when putting onto the internal market goods or services which are identical or similar to those covered by the mark in question. Consequently, non-use of a Community trade mark also risks restricting the free movement of goods and services. (see paras 28, 31, 32, 58, operative part) 2. Article 15(1) of Regulation No 207/2009 on the Community trade mark must be interpreted as meaning 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’ within the meaning of that provision. If recitals 2, 4 and 6 to Regulation No 207/2009 are read together, it is apparent that the regulation seeks to remove the barrier of territoriality of the rights conferred on proprietors of trade marks by the laws of the Member States by enabling undertakings to adapt their activities to the scale of the Community and carry them out without restriction. The Community trade mark thus enables its proprietor to distinguish his goods and services by identical means throughout the entire Community, regardless of frontiers. On the other hand, undertakings which do not wish to protect their trade marks at Community level may choose to use national trade marks and are not obliged to apply for registration of their marks as Community marks. Whilst there is admittedly some justification for thinking that a Community trade mark should — because it enjoys more extensive territorial protection than a national trade mark — be used in a larger area than the territory of a single Member State in order for the use to be regarded as ‘genuine use’, it cannot be ruled out that, in certain circumstances, the market for the goods or services for which a Community trade mark has been registered is in fact restricted to the territory of a single Member State. In such a case, use of the Community trade mark on that territory might satisfy the conditions both for genuine use of a Community trade mark and for genuine use of a national trade mark. It is only where a national court finds that, when account is taken of all the facts of the case, use in a Member State was insufficient to constitute genuine use in the Community, that it may still be possible to convert the Community trade mark into a national trade mark, applying the exception in Article 112(2)(a) of Regulation No 207/2009. Whilst it is reasonable to expect that a Community trade mark should be used in a larger area than a national mark, it is not necessary that the mark should be used in an extensive geographic area for the use to be deemed genuine, since such a qualification will depend on the characteristics of the product or service concerned on the corresponding market. Since the assessment of whether the use of the trade mark is genuine is carried out by reference to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark serves to create or maintain market shares for the goods or services for which it was registered, it is impossible to determine a priori, and in the abstract, what territorial scope should be chosen in order to determine whether the use of the mark is genuine or not. A de minimis rule, which would not allow the national court to appraise all the circumstances of the dispute before it, cannot therefore be laid down. (see paras 40, 50, 51, 54, 55, 57, operative part) 3. See the text of the decision. (see para. 46)