Ewa Górnisiewicz

Not every use of a trademark is sufficient to maintain registration rights

Placing a trademark on items given free-of-charge to customers does not constitute “genuine use” of a trademark required to maintain the registration.

This was the holding of the European Court of Justice in the judgment issued on 15 January 2009 in Silberquelle GmbH v Maselli-Strickmode GmbH (Case C-495/07). The court ruled that providing free gift items to customers when they purchase other products—in this case a free beverage given to buyers of clothing—does not constitute “genuine use” of the trademark registered for beverages. In order to maintain rights to the mark, genuine use is required. If there is no genuine use for an uninterrupted period of five years, the trademark may be revoked (Art. 12(1) of Directive 2008/95/EC; similarly under Art. 169(1)(1) of the Polish Industrial Property Law dated 30 June 2000).

The dispute in the case involved the trademark “Wellness” registered by Maselli for products in classes including class 32, i.e. soft drinks. Silberquelle objected to the registration, claiming that there was no genuine use of the trademark. Giving away soft drinks bearing the trademark to customers who bought clothing did not tend to maintain a share of the drinks market, it argued. Such a marketing campaign could only increase the holder’s share on the clothing market, and thus the conditions for maintaining rights to the mark were not met.

The ruling by the court will enable Silberquelle GmbH to seek revocation of the Wellness trademark and register it for its own use for soft drinks.

The ruling illustrates how important it is to pay attention to maintaining the rights to a trademark. Registration alone is insufficient; actual use for goods covered by the registration is required. If trademarks are registered for goods that are not the principal business of the trademark holder, a strategy should be developed that will allow the holder to take the actions necessary to maintain rights to the trademark.

The judgment by the ECJ falls into line with a consistent pattern of case law presenting fairly rigorous requirements to maintain rights to a trademark. This is designed to eliminate trademarks that are registered for the sake of appearances and enable third parties to use and register the marks.