Registered trade marks which have not been used by their proprietor for a continuous period of five years are at risk of being revoked by third parties. Such use can be by way of affixing the trade mark to the goods or packaging or to objects in respect of which services are being provided or offering the goods/services by way of the trade mark (Article 12(1) of the Directive 89/104).
This case concerns a reference to the European Court of Justice (ECJ) within the framework of a dispute between the Verein Radetaky-Orden (Orden) and Bundesvereinigung Kameradschaft Feldmarschall Radetzky (BKFR) in Austria.
BKFR held a number of registered trade marks in Austria relating to the upkeep of war memorials, organising of military reunions and charitable work. The charitable purpose of BKFR is the preservation of military traditions. This is achieved through such activities as the organisation of memorial services for the armed forces, remembrance services, military reunions and collecting/distributing donations.
Orden sought to revoke BKFR's registered trade marks on the grounds that there was no genuine use of the trade marks by BKFR for a continuous period of five years. This was because the trade marks were only used as badges by members of BKFR at various events, in the collection and distribution of donations and on invitations, stationery and advertising material.
The ECJ had to decide whether the use by BKFR (which is a non-profit organisation) of their registered trade marks in invitations for events, on business papers and on advertising material, as well as the wearing by BKFR's members of badges featuring the trade marks when collecting and distributing donations, constitutes "genuine use" under Article 12(1) of the Directive 89/104.
The Austrian Patent Office revoked the registered trade marks. On Appeal, the Oberster Patent- und Markensenat stayed the proceedings pending the reference to the ECJ, which is outlined above.
Orden's argument was that for genuine use of a trade mark to occur the use must apply to commercial activity for profit. In Orden's view the essential function of a trade mark is as an indicator of origin to ensure that the economic supply by an undertaking is of a constant quality. On the basis that there was a requirement of an economic supply, financial consideration was necessary. That being the case, non-profit activity would fall outside the remit of trade mark protection as it did not require financial consideration. The Advocate General disagreed.
The Advocate General agreed instead with BKFR who argued that non-profit organisations do commercially compete with each other – even if their goods and/or services are not provided for economic consideration. In such circumstances, the registered trade marks of non-profit organisations are used to indicate the origin of the goods or services to distinguish them from other organisations. For example, in the area of collecting donations this use may be important to attract donations from the public over other charitable organisations.
On a general presumption, the Advocate General held that the use made by BKFR of the trade mark on badges, invitations stationery and advertising was genuine use as long as these were all circulated to the public or displayed at events held in public. However, such uses which were restricted to private gatherings limited to existing members of BKFR or internal publications should not be considered as genuine use.
On the face of it, this decision is unsurprising and follows established trade mark practice at least in the UK. To preclude charitable organisations (or indeed any other form of organisation) from trade mark protection on the basis that their activities were not in return for economic consideration would be unjustified. It is therefore likely that the ECJ will follow the opinion of the Advocate General in this case. It is also likely that once the ECJ has provided its answers the guidance they will provide will apply not only to charitable organisations but to many other forms of non-profit making bodies which compete for the public's attention.