On a reference for a preliminary ruling in Verein Radetzky- Orden v Bundesvereinigung Kameradschaft “Feldmarschall Radetzky” [2007] C-422/07 to determine whether a non-profitmaking organisation can make “genuine use” of a trade mark, the European Court of Justice (ECJ ) held that the fact that a charitable organisation does not seek to make a profit does not mean that its objective cannot be to create and preserve an outlet for its goods or services.

BACKGROUND

The Bundesvereinigung Kameradschaft “Feldmarschall Radetzky” (BKFR) is a charitable association dedicated to the preservation of military traditions. The BKFR owns a number of Austrian trade marks, registered in 1996 for maintenance work, cultural activities and social services. The marks represent badges of honour and the BKFR awards orders and decorations that correspond to them. BKFR members wear these decorations when carrying out fundraising activities and they are reproduced on BKFR stationery and invitations to fundraising events.

In 2004, the Verein Radetzky-Orden (Orden) sought to revoke the marks before the Austrian Patent Office on the basis that they had not been used commercially for a period of five years following registration. The Austrian Patent Office granted the application and the BKFR appealed to Austria’s Highest Patent and Trade Mark Senate. The proceedings were stayed to refer a question to the ECJ as to whether the use to which the BKFR put the marks, being non-commercial, constituted “genuine use” under Article 12(1) of the Trade Mark Directive (89/104/EEC).

DECISION

The ECJ held that Article 12(1) must be construed as meaning that a trade mark is put to genuine use where a non-profitmaking association uses the trade mark in its relations with the public, in announcements of forthcoming events, on business papers and on advertising material and where the association’s members wear badges featuring that trade mark when collecting and distributing donations.

The Court observed that the fact that marks are referred to in the Paris Convention as “trade marks” was indicative of their financial purpose. Pursuant to its 12th recital, the Directive was to be interpreted in accordance with the Paris Convention.

Following Ansul (C-40/01), “genuine use” must be use of the mark by the proprietor on the market for the goods or services protected by that mark and not just internal use within the undertaking concerned. In Ansul, use of trade marks by a nonprofit- making organisation during private ceremonies or events, or on publicity materials relating to such events, was held to be internal use and not “genuine use” for the purposes of the Directive.

The ECJ stressed that the fact that the organisation did not seek to make a profit did not mean that its objective could not be to create and preserve an outlet for its goods or services. The Court further observed that the marks might protect the association from the possible use in trade of identical or similar signs by others.

COMMENT

It is now for the Austrian Senate to determine whether the BKFR has made genuine use of the marks by using them to identify and promote its goods or services to the general public, or whether it has merely made internal use of them.