Not using a registered trade mark for five years or more can mean loss of the registration under EU “use it or lose it” rules. So what if the only use relied on is on freebies? Katherine Seymour examines a recent ECJ judgment on a potentially crucial point for promotion marketers.
Who: Silberquelle GmbH -v- Maselli Strickmode GmbH
When: 15 January 2009
Law stated as at: 15 January 2009
The ECJ considered what constitutes 'genuine use' of a trade mark for the purposes of Articles 10 and 12 of the Trade Marks Directive (89/104/EEC) (the "Directive"), following a reference by the Austrian Courts in a trade mark revocation case.
It was ruled that where the owner of a registered trade mark in one class, used that mark on goods that it gave away to customers who bought goods of another class, this does not constitute genuine use of the registered mark. It was emphasised that genuine use is not satisfied when promotional items are handed out as an incentive to encourage the purchase of other goods, as those items were not distributed with the intention to create or maintain the market for goods in the same class.
Maselli Strickmode GmbH ("Maselli"), manufacturers and distributors of clothing, owned the trade mark WELLNESS in Austria in classes 16 (printed matter), 25 (clothing) and 32 (non-alcoholic drinks). Maselli handed out free non-alcoholic drinks labelled "Wellness-Drink" to its customers when they bought their clothing. Maselli made reference to these free drinks labelled with the WELLNESS mark, but did not use this mark when drinks were sold separately.
Silberquelle GmbH ("Silberquelle") who sold non-alcoholic drinks, applied to have the WELLNESS mark revoked on the grounds of non-use under Articles 10(1) and 12(1) of the Directive. The application for revocation was successful, but Maselli appealed the decision. On appeal the proceedings were stayed for a reference to the ECJ for a preliminary ruling.
The ECJ adopted the opinion of Attorney General Ruiz Colomber on this matter. The ECJ took the view that where there was an involuntary action on the part of the purchaser when acquiring the free goods, there constituted genuine use.
Why this matters:
This matter serves as a useful reminder to trade mark proprietors to ensure that they put their registered marks to genuine use. If registered marks are not subject to genuine use within five years from registration or a continuous period of five years, they are liable for revocation.
The ECJ usefully distinguished this case from that whereby trade mark owners sell promotional goods to promote their brand. It was reaffirmed that there is genuine use of a mark when the owner of a mark sells promotional items, in the form of souvenirs or other derivative products, such as T-shirts. There must be a commercial use of the mark to constitute genuine use.