C-40/01

1 — Original language: Spanish. 3 — Established by the Nice Agreement on the International 2 — First Council Directive 89/104/EEC of 21 December 1988 Classification of Goods and Services for the Purposes of the to approximate the laws of the Member States relating to Registration of Marks of 15 June 1957, as revised in Geneva trade marks (OJ 1989 L 40, p. 1). on 13 May 1977.

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6. For its part Ajax has since 16 March sementsrechtbank (District Court) te Rot- 1992 been the proprietor of the composite terdam for an order for, first of all, the mark Minimax in the Netherlands, where it revocation of goods mark no 052713 and sells goods manufactured by its parent the annulment of services mark no 549146, company. That registration, under no and for both registrations to be struck off. 517006, is for goods in Classes 1 (extin- guishing substances) 4 and 9 (fire extin- guishers), and services in Class 37 (the repair, installation, maintenance and refil- ling of fire extinguishers).

10. Ansul opposed those actions and counterclaimed for an injunction pro- hibiting Ajax from using the name Mini- 7. Ajax and Minimax GmbH began to use max in the Benelux countries for the goods the earlier mark in the Benelux countries to and services claimed for its marks, and distinguish the goods and services in respect requiring Ajax to pay a penalty in the event of which it was registered. Ansul objected of failure to cease using the sign. to that use on 19 January 1994.

8. Subsequently, on 13 June 1994, Ansul obtained registration (under no 549146) of 11. By a judgment of 18 April 1996 the the word mark Minimax for services in Rechtbank de Rotterdam dismissed Ajax's Classes 37, 39 and 42, including the main- claims and upheld those of Ansul. tenance and repair of fire extinguishers. 5

'...use... must relate to specific goods sold or supplied or services offered by the user. The question whether a particular use can be regarded as "genuine use" can be answered only (i) by taking into consider- I I— The questions referred for a prelimi- ation all the facts and circumstances spe- nary ruling cific to the case whereby (ii) the decisive factor is whether all the facts and circum- stances specific to the case, when viewed in connection with one another and in the 14. In order to resolve the appeal the Hoge context of what is considered to be usual Raad therefore needs to know what the and commercially justifiable in the relevant scope of the term 'genuine use' in sector of the trade, create the impression Article 12(1) is. It has, therefore, by a that the use serves to find or preserve a judgment of 26 January 2001, stayed pro- market for goods and services under that ceedings and referred two questions to the trade mark and not simply to maintain the Court of Justice for a preliminary ruling. trade mark, and whereby (iii) account must generally be taken, as regards those facts and circumstances, of the kind, extent, frequency, regularity and duration of the use in conjunction with the kind of goods or service and the kind and size of the 15. The first question is worded as follows: undertaking'.

'Must the words "put to genuine use" in 17. The second question referred for a Article 12(1) of Directive 89/104 be inter- preliminary ruling by the Hoge Raad is as preted in the manner set out at paragraph follows: 3.4 above and, if the answer is in the negative, on the basis of which (other)

IV — Revocation of the marks for non-use under substantive law

(2) Maintaining, checking, regauging, repairing and overhauling fire extin- guishing equipment both for Ansul and for the aforementioned undertakings, and using for that purpose components 1. International Agreements on industrial and extinguishing substances originat- property ing from the trade mark proprietor.

A — The Paris Convention

(3) The use, and sale to those undertak- ings, of stickers bearing the trade mark and of strips bearing the words 'Ge- bruiksklaar Minimax' (Ready for use 21. The original wording of the Paris Con- Minimax). vention For The Protection Of Industrial I - 2444

ANSUL

Property signed on 20 March 1883, to commercial establishments considered as which all the Member States of the Euro- co-proprietors of the mark according to the pean Union are signatories, 7did not pro- provisions of the domestic law of the vide for the revocation of rights in a trade country where protection is claimed shall mark for non-use. not prevent registration or diminish in any way the protection granted to the said mark in any country of the Union, provided that such use does not result in misleading the public and is not contrary to the public interest.' 22. It was at the revision at The Hague of 6 November 1925 that a clause on use of trade marks was inserted into the Paris Convention, in the form of Article 5C, which provides as follows: B — Agreement on Trade-Related Aspects of Intellectual Property Rights

2. When subject to the control of its owner, 27. Article 10, governing use of a mark, use of a trademark by another person shall provides as follows: be recognised as use of the trademark for the purpose of maintaining the regis- tration.'

' 1 . If, within a period of five years follow- ing the date of the completion of the registration procedure, the proprietor has not put the trade mark to genuine use in the Member State in connection with the goods or services in respect of which it is regis- tered, or if such use has been suspended 2. Community Law during an uninterrupted period of five years, the trade mark shall be subject to the sanctions provided for in this Directive, unless there are proper reasons for non-use.

A — The First Directive

2. The following shall also constitute use within the meaning of paragraph 1:

25. The European legislature stated in the eighth recital in the preamble to the Direc- tive that 'in order to reduce the total (a) use of the trade mark in a form number of trade marks registered and differing in elements which do not alter I - 2446

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10 — The Spanish version is the only one to have 'Community trade mark'. This is clearly an error as the Directive is not 11 — There is a typographical error in the Spanish version of the concerned with the Community trade mark. Directive which does not affect the English version.

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three months preceding the filing of the origin and genesis of the Uniform Benelux application for revocation which began at Law on trade marks mentioned in the fifth the earliest on expiry of the continuous footnote to the present Opinion. period of five years of non-use, shall, however, be disregarded where prepara- tions for the commencement or resumption occur only after the proprietor becomes aware that the application for revocation may be filed.'

32. The original version of Article 5(3) of the Law provided that the right to a trade mark was to be extinguished:

B — Community trade mark regulation

34. In order to adapt the Law to the First respect of which the trade mark is Directive and insert the relevant provisions registered for an uninterrupted period on the Community trade mark, on of five years; in the event of proceed- 2 December 1992 Belgium, Luxembourg ings the court may allocate all or part and the Netherlands signed a Protocol, 16 of the burden of proving use to the which, pursuant to Article 8, entered into trade mark proprietor; force on 1 January 1996, together with the amendments introduced by the Uniform Law.

35. One of those amendments related to Article 5. Article 5(2) and (3) now provides as follows: 3. For the purposes of Article 5(2)(a) use of the trade mark shall include the following:

'2. The right to the trade mark shall be (a) use of the trade mark in a form declared extinguished within the limits set differing in elements that do not alter out in Article 14 C: 17 the distinctive character of the mark in the form in which it was registered;

(a) in so far as, without good reason, there (b) affixing of the trade mark to goods or has been no normal use of the mark in to the packaging thereof solely for Benelux territory for the goods in export purposes;

1. Introduction

40. The Directive and the legislation of the Member States must be interpreted in the light of the Paris Convention, 21 which in 37. I have endeavoured in the preceding turn provides the inspiration for the Agree- sections to give an account of the various ment on Trade-Related Aspects of Intellec- layers of rules to which the Court of Justice tual Property Rights. 22 The Benelux coun- should in my view have regard in its reply tries, on the other hand, have not only to the Hoge Raad to clarify the specific integrated their respective legal systems in difficulties which have arisen in these the area of trade marks, but also harmon- preliminary proceedings. ised them with those of the other Member States of the European Community, adapt- ing the Uniform Law to the Directive, and they have naturally done so in a manner that is consistent with the obligations imposed by the Paris Convention. 23

38. The Uniform Benelux Law on trade 19 — See the ninth recital in the preamble to the Directive and marks and the case-law thereon of course the judgment in Joined Cases C-414/99 to C-416/99 Zino Davidoff and Others [2001] ECR I-8691, paragraph 42. represent a reference point but in no sense 20 — Judgment in this case was delivered on 4 October 2001 may be regarded as providing an accurate [2001] ECR I-6959. reflection of the answers which the Court 21 — The last recital to the Directive states that the provisions of the Directive are to be 'entirely consistent with those of the of Justice must give to the referring court's Paris Convention'. questions. Since trade mark proprietors are 22 — See in particular Article2(1). 23 — See point 30 of the Opinion in Koninklijke KPN Neder- intended to enjoy the same level of pro- land.

2. The use of trade marks authorising him to enforce those rights against the whole world and to prohibit all use of the sign. However it does so precisely in order that the proprietor might put the sign to use in a way that justifies that exclusivity. 41. Accordingly the replies to be provided to the Hoge Raad must assist it by con- sidering all rules in the Community legal order relating to trade marks. On the basis of an all-embracing approach, therefore, the first observation called for, since it is so obvious, is that trade marks exist to be 44. Thus a trade mark proprietor must use used, 24 so that a proprietor who does not the mark in a way that is consistent with put his distinctive sign to use runs the risk the objectives that the law attributes to this of losing his rights as a result of revocation. piece of property. 25 I think it necessary to reiterate that the relationship between the rights a trade mark confers on its propri- etor and the mark itself is fundamental: the purpose of the legal benefits it carries with it is to enable the consumer to distinguish the goods or service identified, so that the 42. Trade mark registers cannot simply be ability to discriminate, on which freedom repositories for signs hidden away, lying in of choice depends, might lead to the wait for the moment when an unsuspecting establishment of a system of open compe- party might attempt to put them to use, tition in the internal market. 26 only then to be brandished with an intent that is at best speculative. The opposite is true; they must faithfully reflect the reality of indications used by undertakings in the market to distinguish their goods and services. Only marks that are used in commercial life should be registered by 45. In essence, if a proprietor does not wish offices with responsibility for industrial his rights in the trade mark to be revoked, property matters. As the Commission says he must use it 'as a trade mark'. I thus come in its written observations, 'defensive' and to the same issue, albeit by a different 'strategic' registrations must be refused. route, as that which arose in the Arsenal Football Club case (Case C-206/01), in which I delivered my Opinion on 13 June 2002. In that case it was necessary to ascertain the circumstances in which a third

46. There is no doubt in my mind that the imprecise legal notion of 'use as trade mark' means the same thing in both situations. Accordingly I would refer to the reasoning and considerations set out in 50. That statement leads me to posit an that Opinion, 27 and confine myself here to initial hypothesis as to what is meant by restating the conclusion I came to in that 'genuine use'. Where use is a mere sham, is case. formalistic or notional, where it is empty of substance and directed solely at avoiding revocation and does not serve to carve out an opening in the market for the goods and services to which it relates, that use does not constitute genuine use. 47. Use of a trade mark is characterised by two factors. The first is that it must be commercial use, meaning that it must relate to the manufacture and supply of goods or services in the market. Article 5 of the Directive has 'in the course of trade'. 28 51. So much for what does not constitute genuine use. What does qualify as genuine use is less easy to determine.

48. The second requirement is that such commercial use be for the purpose of distinguishing the goods or services by their origin or source, by their quality or by their reputation. 52. Examination of the various language versions of the Directive 29 leads me to the conclusion that the kind of use intended by 27 — See, in particular, points 49, 50, 62, 64 and 88, subpara- graphs 1 and 4. 28 — The German version of' the Directive uses the expression 'geschäftlichen Verkehr , the French 'vie des affaires', the 29 — The Netherlands uses the term 'normal'. The French has English 'course of trade', the Italian 'nel commercio' and 'usage sérieux', the Portuguese 'uso sério', the English finally the Netherlands 'economisch verkeer'. (Translator's 'genuine use' and the German 'ernsthafte Benutzung'. The note: the Spanish uses 'en el tráfico económico']. Italian uses the same adjective as the Spanish: 'effettivo'.

55. For the same reason the notion of 'genuine use' requires use of the sign exactly as it was granted and registered with all its components, other than where, exceptionally, any difference affects elements which do not alter the distinctive character of the mark 'in the form in which 53. It is necessary to provide a purposive it was registered'. 31 interpretation, again by reference to the function performed by a trade mark, and to look at whether the use by the proprietor is directed at distinguishing his goods or services in the market so as to create an outlet by free, open and fair competition. In my view the kind of use the Directive, and in particular Article 12(1), requires is 'sufficient use' or 'appropriate use' to that 56. It is also necessary, given what a trade end (geschikt gebruik; adequate use; usage mark is and the functions it performs, that approprié; geeignete Benutzung; uso atto). use be public and external, directed at the outside world. The mark must by the use made of it be present in the market for the goods or services that it represents. Accord- ingly there will be genuine use not only where the goods are being sold or the services supplied, but also where the trade mark is being used for advertising with a view to those goods or services being launched in the market. 32 54. In order for use of a trade mark to qualify as such, and therefore to be con- 30 — See C. Fernández-Novoa, Fundamentos de derecho de sidered genuine, it must first of all involve marcas, pub. Montecorvo. S. A. Madrid, 1984, p. 23. use of the sign in relation to the goods and 31 — Article 10(2)(a) of the Directive, See also Article 5(2) of the Paris Convention. services for which it is registered. Once it 32 — In my Opinion in the Dieckmann case (C-273/00, judgment has entered consumers' consciousness, the of 12 december 2002 ECR 11737) I emphasised that advertising is one of the functions of a trade mark trade mark constitutes the link between the (point 19).

58. In summary, there can only be 'genuine use' where the trade mark is used, in the form in which it is registered, publicly and in the external world to create an outlet in the market for the goods and services which it identifies. 61. If the goods or service are to be placed in the market, the paradigm for 'genuine use' is their sale or supply under the trade mark. The point beyond which commercial use of the trade mark may be considered 59. Even then, it is still not sufficient that 'appropriate' and 'genuine' is directly those conditions be met unless, as I have related to the type of goods or category of already indicated, the use of the mark is also 'appropriate' to the aims the law ascribes to trade marks. I said a little 35 — Whether a trade mark is being used is a question of fact earlier that where a proprietor uses his that must be determined according to rules of evidence. To that effect Rule 22(2) of Commission Regulation (EC) mark with the sole aim of preventing No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) provides that the proof of use is to consist of 'indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods 33 — See C. Fernández-Novoa, Derecho de marcas, pub. Mon- and services in respect of which it is registered', and adds tecorvo. S. A. Madrid, 1990, pp. 253 and 254. This author in Rule 22(3) that the evidence is, in principle, to comprise adds the exclusive sale of goods bearing the mark to 'supporting documents and items such as packages, labels, employees in the undertaking's stores as internal use. price lists, catalogues, invoices, photographs, newspaper 34 — See Article 10(2)(b) of the Directive. advertisements, and statements in writing'.

62. In any event, irrespective of the volume of transactions carried out under the mark or their frequency, the use must be con- sistent, and not sporadic or occasional. 65. The size of a proprietor's undertaking is, however, irrelevant for the purposes of determining from what point use of a trade mark may be classified as genuine. It used to be a factor in times gone by when distinctive signs had no independent life separate from the rest of the undertaking's assets and could only be assigned together 63. If the nature of the goods or service is with those assets. That is no longer the relevant, so also are the structure and limits case; 36 to some extent the trade mark of the relevant market and the average acquires a 'life of its own' separate from consumer's perception of the product or its proprietor, who may exploit it directly, service in question. though there is nothing to prevent a third party from using it with his consent. 37

67. A small undertaking may own a trade 4. Use of the 'Minimax' trade mark mark for mass consumption goods which are widely distributed and find it necessary to assign the right to exploit it to an undertaking with greater resources. Con- versely, a large company may own a trade 69. By its second question the Hoge Raad mark in a small niche market and assign the is seeking guidance as to whether the use to right to exploit it to a small organisation which Ansul put trade mark no 052713 to operating in that sector. There is therefore distinguish fire extinguishers from 2 May no link between the size of the undertaking 1989 constitutes genuine use. I refer to the that owns the mark and the intensity of the activities set out at point 18 above. use it makes of it in order for that use to be regarded as 'genuine'.

It is for the national court to determine whether the use made by the trade mark owner is appropriate at least to a minimum degree to fulfilling that aim, taking account of the circumstances of each case, and in particular the nature of the goods or service, the structure and limits of the relevant market and the perception of the mark by the average consumer of the goods or services in question.

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