SONN Patentanwälte – IP Attorneys

Use as a Trademark - New referral to the ECJ

After the well-reported Häupl vs. Lidl case of the European Court of Justice (ECJ C-246/05), in which we as patent attorneys directly before the ECJ pleaded through our partner Helmut Sonn about the starting date of the 5-years period in which to start use in case of International marks and about the validity of reasons for the excuse of non-use, Mr Helmut Sonn of the Office Sonn & Partner Patentanwälte now achieved a further referral to the ECJ by the Austrian Supreme Patent and Trademark Senate, the court of last instance in cancellation proceedings, in an action Silberquelle vs. Maselli about the trademark WELLNESS for non-alcoholic beverages.

The question ensued from the following facts:

Maselli, which is in the business of knitwear, used its Austrian trademark WELLNESS in its promotional pamphlets and on etiquettes on bottles of a non-alcoholic drink, i.e. for the goods registered in class 32. The amount of that use was probably to a sufficient extent and it was within the prescribed 5-years period. The legal problem leading to the referral comes from the fact that these bottles were free gifts to the buyers of knitwear, i.e. for the promotion of knitwear and not to satisfy the need of consumers looking for soft drinks.

Articles 10 and 12 of the Trademark Directive speaks only of "genuine" use. But Article 5 deals with preventing third parties from using (the mark) in the course of trade and enumerates in its para 3 certain types of such use, e.g. affixing the sign to the packaging of the goods (here: etiquettes of the bottle), offering the goods and putting them on the market (here: giving them to buyers of knitwear), and using the sign on business paper (here: promising these drinks as give-away in their pamphlets).

Austrian Trademark Law says that use of a trademarks means just that. This type of use fulfils the main function of a trademark, namely to guarantee to the recipient of the goods the identity of the origin of the goods and allows them to distinguish these goods from other soft drinks of other origin without confusion (ECJ C-40/01 Ansul BV vs. Ajax Brandbeveiliging BV).

However, in Ansul vs. Ajax (C-40/01), the ECJ added a further condition not contained in the Directive, namely the use must be aimed at establishing or securing a market share on the market of the goods protected. If this is not the aim, this use is deemed to be only symbolic. The claimant insisted that therefore free giveaways to promote sales in a different market than soft drinks is per definition of the ECJ only symbolic and cannot sustain the mark.

If the ECJ interprets its condition of establishing market shares in a way that any putting on the market or advertising at the same time as fulfilling other aims also (quasi automatically) takes a share of the market to which the goods belong, then this extra condition seems to be superfluous, because it would be practically always fulfilled.

If, on the other hand, the ECJ sticks strictly to the direct meaning of this extra condition, then it abolishes all trademark protection on promotional and merchandizing goods. This effect would follow from the fact that putting such goods on the market (free of charge or not) anyway amounts to trademark infringement according to Article 5 of the Directive and could be stopped by thirds if trademarks for such goods have to be cancelled, because that same use cannot maintain the trademark for such goods.

Since we in Sonn & Partner Patentanwälte will as Patent and Trademark Attorneys represent our client directly before the ECJ, we shall try hard to maintain the possibility to protect also promotional and merchandizing articles through trademarks in Europe.

Dipl.-Ing. Helmut Sonn