Yesterday, in a judgement based on the questions referred to it by the Benelux court in Ansul v Ajax, the European Court of Justice set out the test which should be applied when deciding whether a trade mark has been put to "genuine use" or not.
Background
In the Ansul case the mark in question "Minimax" for fire extinguishers had not been used on goods newly released to the market since 1989 although subsequently the proprietor had been checking, maintaining and repairing used equipment bearing the mark, used the mark on invoices relating to those services and affixed stickers bearing the mark to the equipment and made component parts and sold extinguishing substances bearing the mark.
The wording of the Directive (Article 12(1)) and the Trade Marks Act 1994 (section 46(1)(a)) which implements it in the UK, provides that there are grounds for revocation where "the proprietor has not put the trade mark to genuine use" for five years. The question therefore arose, whether the use that had been made of the "Minimax" mark was sufficient to preclude the application of Article 12(1).
This issue has also arisen in the UK in a number of cases. Jacob J. commented on the meaning of genuine use in his judgement last year in Laboratories Goemar v La Mer Technology (see IPnewsflash, 1 March 2002). He noted that other jurisdictions within the EU had implemented this Article using different terms for "genuine" including "effective", "serious", "normal" (e.g.Benelux) and "real". Jacob’s own finding on the meaning of "genuine" was that "provided there is nothing artificial about a transaction under a mark then it will amount to 'genuine' use. There is no lower limit of 'negligible'." However Jacob J said that the flavour of some of the other terms used instead of "genuine" in other jurisdictions might mean that use must be more than slight, and referred the question to the ECJ.
The ECJ decision
The ECJ recognised the importance of providing a universal interpretation of the "genuine use" requirement. It concluded that "genuine use" of a trade mark means:
"where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of the goods or services at issue, the characteristics of the market and the scale and frequency of use of the mark."
"Genuine use", the ECJ held, entails use of the mark on the market and not just internal use. The protection 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 purpose, which is to create or preserve an outlet for the goods or services that bear the mark as distinct from those of other undertakings. Use of the mark must therefore relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers and under way, particularly in the form of advertising campaigns.
The ECJ continued:
"the fact that a mark that is not used for goods newly available on the market but for goods that were sold in the past does not mean that its use is not genuine, if the proprietor makes actual use of the same mark for component parts that are integral to the make-up or structure of such goods, or for goods or services directly connected with the goods previously sold and intended to meet the needs of customers of those goods."
However, the ECJ refused to comment on whether the use of Minimax by Ansul would fulfil the criteria for "genuine" use which they had just laid down, stating, "it is not for the Court to make such an assessment". The Benelux court had previously found that it did not.
Comment
The ECJ’s test for genuine use does not contradict the UK courts’ previous approach and leaves the flexibility that Jacob J’s findings also provided. Jacob’s emphasis in the Laboratories Goemar case on the careful proving of use, particularly where use levels are low, will still hold true and a demonstration that use has not been merely token, that is to say done with the ulterior motive of validating the registration, will be essential.
The ECJ’s refusal to reach a conclusion on the question of whether or not there had been genuine use in this case is also interesting. It is to be contrasted with the approach taken by the ECJ in its recent decision in Arsenal v Reed (IPnewsflash, 16 December 2002).