The European Court of Justice has ruled that a trade mark used in relation to free promotion items does not constitute genuine use. Under Article 12 of the Trade mark directive a trade mark is lost if it is not used genuinely for five years.

Silberquelle v Maselli was a preliminary ruling case on the interpretation of the Directive. Silberquelle had brought an action against Maselli for the partial revocation, for lack of genuine use, of a Maselli trade mark. Maselli, a clothing manufacturer and retailer owned the word mark ‘WELLNESS’ which it had used on gift bottles handed out with sales of clothing. Silberquelle, an alchol-free drinks retailer, had applied for cancellation of the mark on the grounds of non-use.

The ECJ noted that “the protection that the mark confers and the consequences of registering it in terms of enforceability vis-à-vis third parties cannot continue to operate if the 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, as distinct from the goods or services of other undertakings.”

“It is essential, in the light of the number of marks that are registered and the conflicts that are likely to arise between them, to maintain the rights conferred by a mark for a given class of goods or services only where that mark has been used on the market for goods or services belonging to that class.”

“That condition is not fulfilled where promotional items are handed out as a reward for the purchase of other goods and to encourage the sale of the latter.” The ECJ continued: “In such a situation, those items are not at all distributed with the aim of penetrating the market for goods in the same class. Under those circumstances, affixing the mark to those items does not contribute to creating an outlet for those items or to distinguishing, in the interest of the customer, those items from the goods of other undertakings.”

The court summarised that “where the proprietor of a mark affixes that mark to items that it gives, free of charge, to purchasers of its goods, it does not make genuine use of that mark in respect of the class covering those items.”

For a more critical review of the case read Jeremy Phillip’s article “WELLNESS? You can’t even give it away …“

Photo: mzacha