## Facts

- Leno Merken BV owned an EU (Community) trade mark, ONEL, registered for services in Nice Class 35.
- Hagelkruis Beheer BV applied to register OMEL as a Benelux word mark for similar services.
- Leno opposed the application, alleging likelihood of confusion based on its earlier ONEL mark.
- Hagelkruis raised a non-use defense, arguing ONEL had not been put to genuine use in the European Union within the relevant five-year period.
- Leno’s evidence showed use of ONEL only in the Netherlands.
- The Benelux Office for Intellectual Property accepted the non-use defense and rejected the opposition.
- On appeal, the Court of Appeal of The Hague stayed proceedings and referred questions to the Court of Justice of the European Union on the territorial scope of “genuine use in the Community.”

## Issues

1. Whether “genuine use in the Community” for an EU trade mark requires use in more than one Member State.
2. Whether use confined to a single Member State is always sufficient, always insufficient, or depends on the circumstances.
3. What criteria govern the territorial aspect of genuine use when the EU trade mark has unitary effect across the European Union.

## Decision

- The CJEU ruled that genuine use “in the Community” does not require use in more than one Member State.
- The Court rejected any automatic rule that use in one Member State is always sufficient or always insufficient.
- Territorial extent is a relevant factor, but it must be assessed with all circumstances showing real commercial exploitation.
- The Court emphasized that Member State borders are not a controlling test for genuine use, though the analysis must reflect the economic reality of the relevant market.
- The CJEU left it to the referring national court to apply the criteria to the evidence of use of ONEL in the Netherlands.

## Legal Principles

- “Genuine use” requires real commercial exploitation consistent with the mark’s essential function of indicating origin; token use is insufficient.
- The territorial scope of use is only one factor in assessing genuine use and must be considered alongside volume, frequency, nature of the goods/services, and market characteristics.
- No numeric or per se territorial threshold applies to EU trade marks; use in a single Member State may constitute genuine use if, in context, it is commercially justified and meaningful in the relevant market.
- The unitary character of the EU trade mark does not imply a mandatory requirement of multi-state use, nor does it eliminate the need to evaluate whether the use is more than minimal.

## Conclusion

The CJEU interpreted “genuine use in the Community” as a context-dependent inquiry with no fixed requirement that an EU trade mark be used in multiple Member States, allowing single-state use to suffice when it reflects real commercial exploitation in the relevant market.


Leno Merken BV v. Hagelkruis Beheer BV, Case C-149/11 (C.J.E.U. 2012)