In Silberquelle GmbH v Maselli-Strickmode GmbH C-495/07, the European Court of Justice (ECJ) was asked for a preliminary ruling on whether there is genuine use of a trade mark which is applied to goods given away free of charge when a consumer purchases other goods from the same origin. Agreeing with Advocate General Colomer, the ECJ held that there was no genuine use in such circumstances.
Maselli is a manufacturer and distributor of clothing and the proprietor of an Austrian trade mark in respect of WELLNESS for printed matter, clothing and non-alcoholic drinks. It does not sell drinks under the WELLNESS mark, but gives them away free of charge to purchasers of its WELLNESS-branded clothing.
Silberquelle, a drinks distributor, applied for the cancellation of the mark for non-alcoholic drinks under Article 10(1) of the Trade Marks Directive (89/104/EEC) (no genuine use within five years of registration), or Article 12(1) (no genuine use for a continuous period of five years) as implemented into Austrian law, on the basis that no genuine use had been made of the mark in respect of any relevant goods.
The Austrian patent and trade mark registry stayed the cancellation proceedings and referred to the ECJ the question of whether Articles 10(1) and 12(1) of the Directive are to be interpreted as meaning that a trade mark is being put to genuine use if it is used for promotional goods given away free of charge to customers.
Following Ansul BV v Ajax Brandbeveiliging BV  C- 40/01 and Verein Radetzky-Orden C-442/07, the ECJ held that “genuine use” 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.
The ECJ concluded that Maselli’s WELLNESS drinks were not distributed with the aim of penetrating the market for nonalcoholic drinks. Under the circumstances, affixing the mark to non-alcoholic drinks did 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 ECJ held that 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 those promotional goods.
The ECJ reiterated the Advocate General’s point that trade marks should not be permitted to languish on the register if no genuine use is made of them, as one of the objectives of the Trade Marks Directive is the protection of competition in the markets for goods and services. As the Advocate General stated, the fact that responsibility for cleaning up the registers falls to competitors “reinforces the central role of competition in bringing trade mark offices into line with the economic situation”, whilst allowing trade mark offices to remain neutral.