• EUROPEAN PERSPECTIVES

    When is use genuine?

    One of the most important aspects of harmonised EU trade mark law is the ability of third parties to seek to revoke a trade mark registration, on the ground of non-use, once the mark has been on the Register for five years. In order to resist such a revocation action, the trade mark owner has to show that he has put the mark to genuine use in connection with the registered goods or services during the relevant five year period.

    The ECJ has now considered the question of genuine use of a trade mark in a case (Ansul v Ajax Brandbeveiliging) involving fire extinguishers and related goods and services. The facts of the case were as follows:

    Ansul owned a Benelux trade mark registration for Minimax covering, amongst other goods, fire extinguishers and associated products. For a number of years, they sold Minimax fire extinguishers in Benelux but these sales stopped in 1989. From then on, Ansul supplied component parts and extinguishing substances to those responsible for maintaining Minimax extinguishers, as well as offering maintenance, checking and repair services for such extinguishers. Whilst supplying these services, Ansul used their mark on invoices and affixed stickers bearing the words Gebruiksklaar Minimax (Ready for use Minimax) to the equipment serviced.

    Ajax was the subsidiary of a German company, Minimax GmbH. The latter had owned the trade mark Minimax for fire extinguishers in Germany for over 50 years. In the early 1990s, Minimax GmbH decided to expand its use of Minimax branded products to the Benelux. They therefore obtained a Benelux trade mark registration for the mark in 1992 and, two years later, through their subsidiary Ajax, began selling Minimax fire extinguishers and related products in the Benelux.

    Ansul objected to this use and, in response, in February 1995, Ajax sought to revoke Ansul’s Benelux trade mark registration for Minimax on the ground of five years non-use. In the first instance, the Court found that Ansul’s use of Minimax during the period 1990 to 1995 had been genuine in respect of fire extinguishers. On appeal, this decision was reversed. In the Dutch Appeal Court’s view, Ansul had not released any new Minimax products since 1989 onto the Benelux market, but had merely maintained, checked and repaired used equipment. These activities did not constitute genuine use of the trade mark Minimax in relation to fire extinguishers.

    Ansul appealed further to the Dutch Hoge Raad. That Court asked for a ruling from the ECJ on the meaning of the words “genuine use” in Article 12(1) of the EU Trade Mark Harmonisation Directive. The ECJ made these rulings:

    • There should be a uniform definition of the genuine use of a trade mark throughout the EU.

    • Genuine use was not token use, but actual use of the mark on the market for the goods or services registered. Such genuine use could include, for example, an advertising campaign featuring the mark ahead of an imminent product launch.

    • When assessing genuine use account may be taken of inter alia the nature of the goods or services registered, the characteristics of the market concerned and the scale and frequency of use of the mark.

    • Genuine use did not necessarily require a significant level of use. The appropriate level of use would depend on the type of goods/services and the corresponding market.

    • In certain circumstances, genuine use might be found if the registered goods were once sold but were no longer available.

    • If the trade mark proprietor continues to sell integral parts of the original goods or accessories or related parts for the original goods under the registered mark, this could constitute genuine use of the mark in respect of the original goods. Similarly, the supply of maintenance or repair services for the original goods could also be viewed as genuine use of the mark in relation to the original goods.

    • It was for the national Court, rather than the ECJ, to decide, in the light of the above, whether Ansul’s use of Minimax in the period 1990 to 1995 was genuine use of the mark in respect of the registered goods.

     

    Comment

    This ECJ ruling is unfortunate. It is submitted that, if Ansul has not used the trade mark Minimax in relation to fire extinguishers for five years, then their registration should be cancelled for such extinguishers. If, by contrast, they have continued to supply Minimax spare parts for extinguishers or a Minimax after sales service, then, by all means, allow them to maintain their registration for such spare parts or services, assuming the use was genuine rather than token, but this use should not allow them to maintain a registration covering extinguishers per se.

    EU trade mark registers are already cluttered with too much dead wood. The removal (or part removal) of registrations on the ground of five years non-use should therefore be simple and straightforward. This ruling has complicated the process considerably and in an unjustifiable way.

    We are told that the use of a trade mark in one EU country will save a CTM registration from revocation (although the writer questions this). From May 2004, ten new countries, including Cyprus and Malta, will join the Union (bringing the total to 25 countries). Is it seriously suggested that the supply of an after sales service for Minimax fire extinguishers in Cyprus or Malta should prevent the revocation of a CTM registration for Minimax covering fire extinguishers, when no sales of the extinguishers themselves have taken place in the EU for 5 years?

    In the writer’s view, only the Dutch Appeal Court reached the correct decision in the Ansul case. Their reasoning is much to be preferred over the ruling of the ECJ.