Genuine Trade Mark use?
SILBERQUELLE GmbH v. MASELLI-STRICKMODE GmbH
The ECJ has provided further clarification of the issue of genuine trade mark use that should prompt proprietors to review carefully use of trade marks on free promotional goods and the corresponding effect on the validity of registrations.
In brief, the question referred to the ECJ was "is a trade mark put to genuine use if it is used for goods which the proprietor of the trade mark gives, free of charge, to purchasers of his other goods after conclusion of the purchase contract?"
In this particular case, the trade mark proprietor gave bottles of water to which the WELLNESS trade mark had been applied, to consumers who had bought items of WELLNESS clothing. The challenged registration claimed inter alia both "clothing" and "alcohol free drinks". The drinks concerned were not available for purchase separately.
The ECJ's guidance may be summarised as follows:-
- In accordance with existing case law, "genuine use" is consistent with the essential function of the trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or user by enabling him without any possibility of confusion to distinguish the goods or services from others which have another origin.
- Where a free gift is given to the purchaser of different items, he has not performed any conscious act of acquiring that free gift by comparing it with other similar goods.
- A trade mark that does not compete on the market for goods for which it was registered, is not put to genuine use, even where the goods bearing the mark are an advertisement to promote the sale of other goods bearing the same mark.
- This decision does not relate to the situation in which the proprietor of a trade mark sells promotional items in the form of souvenirs or other derivative products.