Trademarks, Brands, Patents, Designs, Made in Italy, Copyrights, Competition Law, Contracts and Enforcement

16 gennaio 2009

Promotional items do not qualify for genuine use

Fabio Angelini

In C‑495/07, Silberquelle GmbH v. Maselli-Strickmode GmbH, decided yesterday, the ECJ held that where the proprietor of a mark affixes that mark to items that it gives, free of charge, to purchasers of its goods, it does not make genuine use of that mark in respect of the class covering those items.

The ECJ held that, in accordance with its earlier decisions such as C-40/01 Ansul and case C-442/07 Verein (Radetzky-Orden at paragraph 13) where it had said that the requirement of ‘genuine use’ is predicated upon the principle that the protection that 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 raison d’être, which is to create or preserve an outlet for the goods or services that bear the sign of which it is composed, as distinct from the goods or services of other undertakings, it follows that such a 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.

As a matter of fact, the ECJ held, in
such a situation, those items are not at all distributed with the aim of penetrating the market for goods in the same class. Under those circumstances, affixing the mark to those items does not contribute to creating an outlet for those items or to distinguishing, in the interest of the customer, those items from the goods of other undertakings.

The consequences are immediately clear: there is no more need to maintaining broad registrations based on “trinkets” freely given and not marketed. At least in Europe we’re beginning to clear the Trademark Registries….

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