In a decision on January 15, the Court answered a question arising from a dispute between Silberquelle and Maselli-Strickmode that was referred from Austria.
Maselli, which makes and sells clothing, owns the mark Wellness in Austria, which is registered in class 16 (printed matter), class 25 (clothing) and class 32 (alcohol-free drinks).
The company handed out drinks in bottles marked Wellness-Drink to consumers of its clothing, but has not used its mark for drinks sold separately.
Silberquelle, which sells drinks, applied to cancel the Wellness mark for class 32.
In November 2006 the Austrian Patent Office cancelled the mark but Maselli appealed that decision to the Oberster Patent- und Markensenat.
The Oberster Patent- und Markensenat asked the ECJ if Articles 10(1) and 12(1) of the EU Trade Marks Directive mean that a trade mark is put to genuine use if it is used for goods which the trade mark owner gives, free of charge, to purchasers of other goods "after conclusion of the purchase contract".
The Directive says that a mark is liable to revocation if it has not been put to "genuine use" within a period of five years for the goods or services for which it is registered, unless there are proper reasons for non-use.
Noting that "genuine use" in the Directive must denote actual use "consistent with the essential function of a trade mark", the Court said that it is essential to maintain a trade mark right "only where that mark has been used on the market for goods or services belonging to that class".
It added: "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. In such a situation, those items are not at all distributed with the aim of penetrating the market for goods in the same class."
Stephan Hofinger of Torggler & Hofinger, who acted for Silberquelle, told Managing IP the decision was clear-cut: "Any kind of gift to the purchaser of another product is not considered as use of a trade mark."
Helmut Sonn of Sonn & Partner, who represented Maselli, was not available to comment before Managing IP's deadline.
The Czech government made a submission supporting Maselli, while the Portuguese government and the Commission supported Silberquelle.
Hofinger said the decision will have a broad impact: "There are many pending cancellation requests and use is always a question in opposition proceedings."
He predicted that a final decision in the case could be made before the middle of the year.
