While the ONEL/OMEL decision has led to discussions on the geographical scope of use of a registered CTM, the Norwegian Industrial Property Office (NIPO) Board of Appeal (BOA) has issued a decision referring to the quantitative requirements underlying the "genuine use" criterion.
The trademark in question was registered for hair care products. During the registration period, the proprietor imported 400 products to a local distributor but there was no evidence of any sales or marketing attempts towards the end consumer.
The BOA 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 trademark owner must show real mercantile interests in the mark.
Since the subject mark was registered for hair care products, which are everyday products with a high sales frequency, the BOA concluded that the sale of 400 products over a period of 5 years was a relatively low number. Furthermore, hair care 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". The BOA consequently concluded that the trademark owner had insufficiently demonstrated mercantile interests in the trademark and that, in comparison to normal sales and marketing activities for the products in question, the sales of 400 products alone could not qualify as "genuine use". The registration was revoked in its entirety.
The BOA avoided discussing the vital 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 in them and decided that sales could only be said to go beyond token use if goods or services are offered to the market in a fashion and scale that matches normative activity within the specific 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. The hurdle of showing genuine use would consequently seem to be raised, at least for consumer goods.
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