SONN Patentanwälte – IP Attorneys

Austrians tend to use their trade marks for free

Within a very short period of time, the ECJ had to answer two questions from the Austrian Oberster Patent- und Markensenat for a preliminary ruling. Both questions concerned Art. 12 of the Trade Mark Directive, i.e. the genuine use of a trade mark, and in both cases the trade marks were used without gaining any profit by the trade mark owner. So one could assume that the answer to both questions should be similar – not at all!

In the first case C-442/07 (Radetzky), a non-profit organisation for preserving military traditions, doing memorial services and charitable works such as collecting of gifts and cash registered figurative and word marks representing essentially badges of honour. Members of the Association wear those orders and decorations at various events and collecting and distributing donations. Additionally, the trade marks were printed on invitations to forthcoming events.

Unsurprisingly, the ECJ ruled that using the registered trade mark in relation with the public, for example in announcements of forthcoming events, and advertising materials as well as wearing badges featuring the trade marks, does constitute a genuine use according to Art. 12 of the Trade Mark Directive. Accordingly, being a non-profit making association is not a bar for genuinely using a registered trade mark. This can only be true.

The other case, C-495/07 (Silberquelle), concerned the use of the mark WELLNESS on alcohol-free drinks. The trade mark owner used its registered trade mark on bottles including alcohol-free drinks. However, this public use was not considered to be genuine use by the ECJ. So what did the trade mark owner wrong?

He did not sell its alcohol-free drinks but rather gave them away free of charge to purchases of jumpers also being marked with the trade mark in dispute. According to the ECJ, affirming the mark to items which are given away free of charge to purchases of other goods, does not establish genuine use of the trade mark. These – doubtful – findings were reasoned with reference to the Ansul decision according to which it does not constitute genuine use if the trade mark loses its commercial raison d’être, which is to create or preserve an outlet for the goods or services that bear the sign of which it is composed.

This reasoning cannot convince. A closer look to the Ansul decision shows that the reference to creating or preserving an outlet for the goods or services was only set forth as distinction from a mere internal use. It was not at all meant to add a further unwritten subjective criterion for genuine trade mark use. However, unfortunately, the ECJ took this sentence out of the context of the Ansul decision and alleviated it to being a general requirement for genuine trade mark use.

What is especially misleading in the findings of the Court is the reference to being used free of charge. Obviously whether an item is given away free of charge or for money, cannot make any difference to genuine or not genuine trade mark use.

Accordingly, it should be noted that the Silberquelle decision does not at all mean that any use free of charge does not constitute trade mark use. Additionally, this decision unfortunately leads to the result that exactly the same use of a trade mark might be infringing but does not constitute genuine trade mark use.

It can only be hoped that this ruling will be considered as a singular case and that no general conclusions will be drawn therefrom.

Dr. Rainer Beetz