After the widely reported Häupl v Lidl case at the European Court of Justice (ECJ C–246/05), concerning the starting date of the five-year period in which to start use of international marks and about the validity of reasons for the excuse of non-use, we have now achieved a further referral to the ECJ by the Austrian Supreme Patent and Trade Mark Senate, the court of last instance in cancellation proceedings, in the case Silberquelle v Maselli over the trade mark WELLNESS for non–alcoholic beverages.
The question arose from the following facts. Maselli, which is in the business of knitwear, used its Austrian trade mark WELLNESS in its promotional pamphlets and on labels on bottles of a non-alcoholic drink, that is for goods registered in class 32. The extent of that use was probably sufficient and it was within the prescribed five-year period. The legal problem leading to the referral arises from the fact that these bottles were free gifts to the buyers of knitwear, that is they were intended to promote the knitwear and not to satisfy the need of consumers looking for soft drinks.
Articles 10 and 12 of the EU Trade Mark Directive speak 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 third paragraph certain types of such use, such as affixing the sign to the packaging of the goods (here, labels 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–aways in their pamphlets).
Austrian Trade Mark Law says that use of a trade mark means just that. This type of use fulfils the main function of a trade mark, namely to guarantee to the recipient of 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 v Ajax Brandbeveiliging BV).
However, in Ansul v Ajax, the ECJ added a further condition not contained in the Directive, namely that 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 therefore that free giveaways to promote sales in a different market to soft drinks are, by the ECJ's definition, 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 practically always be fulfilled.
If, on the other hand, the ECJ sticks strictly to the direct meaning of this extra condition, then it abolishes all trade mark 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) amounts to trade mark infringement according to Article 5 of the Directive and could be stopped by third parties if trade marks for the goods have to be cancelled, because that use cannot maintain the trade mark for such goods.
Sonn & Partner Patentanwälte is representing Maselli before the ECJ in this case
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| Helmut Sonn |
SONN & PARTNER Patentanwälte
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