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WELLNESS? You can't even give it away ...

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

The Advocate General's Opinion, unkindly, is only in 14 official languages of the European Union including Maltese and Latvian (but neither Estonian nor Lithuanian - is there some subtle Baltic plot underfoot?) but not English. The judgment of the full court, posted today, however appears even in English. So what is Case C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH all about?

The story behind this reference from Austria's Oberster Patent- und Markensenat (Austria) goes like this. Maselli, which makes and sells clothing, owns the Austrian word mark WELLNESS for goods in Class 16 (printed matter), Class 25 (clothing) and Class 32 (alcohol-free drinks). When promoting sales of its clothing, Maselli used its mark on an alcohol-free drink which it handed out as a free gift in bottles marked WELLNESS-DRINK, along with its not-so-free clothing. Maselli's promotional documents actually referred to free gifts labelled with the WELLNESS mark. The company never however used the WELLNESS mark on any drinks that were sold separately from its clothing.

Silberquelle, an alcohol-free drinks maker, applied to cancel the registration of the WELLNESS mark in Class 32 on the grounds of non-use. Austria's Cancellation Division duly obliged; Maselli then appealed to the Oberster Patent- und Markensenat which stayed the proceedings and to referred the following question to the Court of Justice for a preliminary ruling:

"Are Articles 10(1) and 12(1) of the [Directive 89/104 on the approximation of trade mark law] to be interpreted as meaning that a trade mark is being put to genuine use if it is used for goods (here: alcohol-free drinks) which the proprietor of the trade mark gives, free of charge, to purchasers of his other goods (here: textiles) after conclusion of the purchase contract?".

The ECJ gave its answer today in impeccable German:

"Articles 10(1) and 12(1) ... must be interpreted as meaning 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 IPKat isn't hugely happy with this answer. This is how the Court's reasoning goes:

"17 It is settled case-law that ?genuine use? within the meaning of the Directive must be understood to denote actual use, consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin.... [so far, so good]

18 It follows from that concept of ?genuine use? 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 [this can't be right, surely!  Marks don't have a raison d?être; rather, mark-owners have a reason for registering and deploying marks], as distinct from the goods or services of other undertakings ....

19 ... it is essential, in the light of the number of marks that are registered and the conflicts that are likely to arise between them, to maintain the rights conferred by a mark for a given class of goods or services only where that mark has been used on the market for goods or services belonging to that class [but if the consumer will be confused between one trader's use of a mark on a freebie and another's use on paid-for goods, is the protection of the consumer's comprehension not at least as important as the number of marks on the register? ].

20 ..., 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 [this seems like an assertion rather than a statement of law or a reasoned justification].

21 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 [what makes the court think it knows what the interest of the customer is?]".

In the streets of London, Merpel observes, a variety of free newspapers are handed out by the tens of thousands, to commuters, shoppers and other innocent victims. The owners of the titles of those newspapers can register those titles as trade marks for advertising services, which is the market in which they compete with one another, but presumably they wouldn't be making any genuine use of those marks for printed papers in Class 16.  Is this right, or has her katty little brain missed something?  

Full post as published by IPKat on January 15, 2009 (boomark / email).