Normative marketing activity as indicator of genuine use

While the ONEL/OMEL decision of the European Court of Justice has led to discussions on the geographical scope of use of a registered Community trademark, the Norwegian Industrial Property Office Board of Appeal has issued a decision referring to the quantitative requirements underlying the 'genuine use' criterion.

The trademark in question was registered for haircare products. During the registration period, the mark owner imported 400 products to a local distributor, but there was no evidence of any sales or marketing attempts towards the end consumer.

The board stated that when assessing the genuine use criterion, consideration must be given to:

• the nature of the goods at issue;
• the characteristics of the market concerned; and
• the scale and frequency of use of the mark.

Use of the mark does not have to be quantitatively significant to be deemed genuine, but the mark owner must show a real commercial interest in the mark.

Since the mark at issue was registered for haircare products, which are everyday products with a high sales frequency, the board concluded that the sale of 400 products over a period of five years was a relatively low number. Furthermore, haircare products and similar goods are usually advertised quite intensively towards the subject market, and the lack of any marketing attempts towards Norwegian end consumers was described as a "pronounced deviation from common marketing activity within the subject field of business". Therefore, the board concluded that the mark owner had insufficiently demonstrated a commercial interest in the trademark and that, in comparison to usual sales and marketing activities for the products in question, the sale of 400 products alone could not qualify as genuine use. Thus, the registration was revoked in its entirety.

The board avoided discussing the key question of whether import by a single distributor could qualify as genuine use, but instead looked at the nature of the goods and the market, and decided that sales could be said to go beyond token use only if goods or services were offered to the market in a fashion and scale that matches usual activity within that sector. Hence, the decision seems to imply that import by an independent importer would not amount to use unless the mark comes to the attention of the end user. Therefore, the bar for proving genuine use would appear to be raised, at least for consumer goods.

For further information on this topic please contact Celine Varmann Jørgensen at Bryn Aarflot AS by telephone (+47 92 83 16 19), fax (+47 22 00 31 31) or email (cvj@baa.no).