Onel vs Omel: not Normal?

Excitement in The Netherlands: in opposition proceedings between Leno Merken B.V. – owner of the CTM ‘Onel’ – acting against Hagelkruis Beheer B.V. – that had applied for registration of the trade mark ‘Omel’ in the Benelux – the Benelux Office for Intellectual Property (BOIP) decided on January 15, 2010 that normal use of a CTM in one Member State is not normal use in the EU.

BOIP considers that a trade mark right is a monopoly. To justify such monopoly and to fulfill its essential function, the trade mark should be used. A monopoly that goes (much) farther than the territory within which the trade mark is used, is definitely an exception to the principle of free circulation of goods and the rendering of services within the internal market. That is clearly not what the legislator has intended.

It appears very unjust that a company that uses its trade mark only in a local market, could prevent the opportunities for other companies for the entire territory of the internal market. It even appears even more unjust if a company that is only active locally (this is the case for the greater part of the Small and Medium Market companies, which form a serious part of the European economy), could be hampered in the development of its activities by and should defend itself against another company that is also only active locally and has no economic activity at all in an area that is not even in the slightest way nearby, so that there can be no likelihood of confusion at the public relevant for both companies relevant public.

Therefore the BOIP – which considered that both parties apparently agreed that the trade mark Onel was only used in the Netherlands – comes to the conclusion that there was no normal use of Onel. It took into account too that the services for which the trade mark was registered (class 35, 41 and 45) are according to their nature fit for a broad public in the entire internal market. BOIP comes to the far reaching conclusion that the idea laid down in the Joint Statements that normal use in one country of the EC should be regarded as normal use per se is incorrect. What’s that smell? That of an appeal?