In order to maintain the validity of a trade mark registration under European harmonized national laws and also Community law, the mark must be put to genuine use within 5 years of the date registration and the use must not be discontinued for any 5-year period thereafter. Moreover, the ECJ has previously decided** that use is only genuine if it serves to establish or maintain a market for the goods or services protected by the registration.
Silberquelle applied to cancel the registration of the mark WELLNESS owned by Maselli, registered for non-alcoholic beverages. The evidence showed that in the relevant period Maselli’s use consisted of giving away for free and as a ‘bonus’ WELLNESS drinks to purchasers of Maselli’s WELLNESS clothing. The ECJ thus had to decide whether giving away free promotional items could constitute genuine use. The answer of the Court was ‘no’: the drinks market was not affected by Maselli’s drinks, the use was not to create a market for Maselli’s drinks, nor to preserve such a market position. Moreover, such use is not in accord with the basic raison d’être of a trade mark, namely to distinguish its proprietor’s goods from those of other undertakings. So Silberquelle succeeded.
*Silberquelle GmbH v Maselli-Strickmode GmbH, Case C-496/07, ECJ, January 15, 2009
**Ansul BV v Ajax Brandbeveiliging BV, Case C-40/01, ECJ, March 11, 2003, [2003] ECR I-2439
Practice Tip
Giving away free promotional items is very common practice (T-shirts, mugs, baseball caps, pens etc etc.) and most proprietors register their main marks in these ‘merchandising classes’ as an adjunct to the registration covering their principal goods or services. This judgment ignores such commercial realities. Either proprietors will now have to consider charging for their promotional goods and actually sell them in the market (not, we suspect, a popular choice) or they will have to accept that after the initial invulnerable 5-year period they may have to re-register in those classes so as, in effect, ‘to reset the 5-year invulnerability clock’.
Contributed by Kilburn & Strode (www.kstrode.co.uk)