The ECJ Defines the “Genuine Use” of Trade Marks

Profession:Herbert Smith
 
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The ECJ Defines the "genuine use" of Trade marks

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...

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