Opinion of the Advocate General — ECLI:EU:C:2002:412
Date: 2002-07-02
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Netherlands

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. 59. Even then, it is still not sufficient that those conditions be met unless, as I have already indicated, the use of the mark is also appropriate to the aims the law ascribes to trade marks. I said a little earlier that where a proprietor uses his mark with the sole aim of preventing revocation, that use cannot be classified as genuine. Taking that approach beyond the purely subjective, I may add that nor will there be sufficient use of a sign which, whilst not pursuing that aim, is not appropriate at least to a minimum degree to fulfilling the functions the law ascribes to it. 60. Such objective appropriateness can only be determined by reference to the circumstances in each case, the assessment of which are a matter for the national court. (35) None the less I am able to propose some criteria by way of guidance for the purposes of making that assessment. 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 appropriate and genuine is directly related to the type of goods or category of service. As the Commission noted in its written observations, the degree of use required of a mark employed in relation to luxury goods of limited distribution cannot be the same as for a mark employed in relation to mass consumption goods. 62. In any event, irrespective of the volume of transactions carried out under the mark or their frequency, the use must be consistent, and not sporadic or occasional. 63. If the nature of the goods or service is relevant, so also are the structure and limits of the relevant market and the average consumer's perception of the product or service in question. 64. As I have already observed, for the proprietor the mark constitutes the link between the sign and the goods or service, and represents the vehicle by which, as a result of the way in which it is perceived by consumers and the consequent association between it and those goods or services, he places himself in the market. That is why market structure, which depends, amongst other things, on the nature of the product, and distribution channels are very significant in determining whether a trade mark is actually being used. Clearly, for instance, using a trade mark for edible preserves is entirely different from using it for electronic computer components. Nor is there any comparison between consumers' powers of perception in relation to those products. The range of types of use in order for the mark to fulfil its function is very different in each case. 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 with those assets. That is no longer the case; (36) to some extent the trade mark acquires a life of its own separate from its proprietor, who may exploit it directly, though there is nothing to prevent a third party from using it with his consent. (37) 66. If, in order for use to be genuine, it must be directed at creating an opening in the market for the goods or services identified by the mark, the intensity of use will depend, as I have already said, on the nature of the goods or service and on the structure and size of the relevant market, though not on the size of the undertaking that owns it, whether or not it is putting it to use. 67. A small undertaking may own a trade 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. Conversely, a large company may own a trade mark in a small niche market and assign the right to exploit it to a small organisation operating in that sector. There is therefore no link between the size of the undertaking that owns the mark and the intensity of the use it makes of it in order for that use to be regarded as genuine. 68. On the basis of all the foregoing I therefore propose that the Court of Justice reply to the first question referred by the Hoge Raad as follows. There can only be genuine use where the trade mark, in the form in which it is registered (or with changes that do not alter its distinctive character), is used consistently, publicly and in the outside world to create an outlet in the market for the goods and services which it identifies, and not for the sole purpose of maintaining it. It is for the national court to determine whether the use by the trade mark owner is appropriate to at least 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. 4. Use of the Minimax trade mark 69. By its second question the Hoge Raad is seeking guidance as to whether the use to which Ansul put trade mark no 052713 to distinguish fire extinguishers from 2 May 1989 constitutes genuine use. I refer to the activities set out at point 18 above. 70. The reply to this second question is implicit in the reply I have proposed to the first question. It is for the Hoge Raad, applying the criteria given it by the Court of Justice, to deliver judgment accordingly in the light of all the facts at its disposal, together with those pleaded, albeit to no avail, by the parties at the hearing. 71. It must, however, be recalled that the concept of genuine use of a trade mark requires that the mark be put to use in relation to the goods or services for which it is registered. VI - Conclusion In view of the foregoing considerations I propose that the Court reply to the questions referred by the Hoge Raad in the following terms: There can only be genuine use within the meaning of Article 12(1) of Council Directive 89/104/EEC of 21 December 1988, First Directive to approximate the laws of the Member States relating to trade marks, where the trade mark, in the form in which it is registered (or with changes that do not alter its distinctive character), is used consistently, publicly and in the outside world to create an outlet in the market for the goods and services which it identifies, and not for the sole purpose of maintaining it. 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. 1: - Original language: Spanish. 2: - First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1). 3: - Established by the Nice Agreement on the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised in Geneva on 13 May 1977. 4: - The materials and preparations that are emitted under pressure and smother flames are known in the safety sector as extinguishing substances. 5: - The original version of the Uniform Benelux Law on trade marks (Nederlands Traktatenblad 1962, No 58, pp. 10 to 76) did not provide for the registration of signs for services. That possibility was only envisaged after the entry into force of Article 39 on 1 January 1987. That amendment was the result of the Protocol on service marks signed in Brussels on 10 November 1983 (Nederlands Traktatenblad 1983, No 187, pp. 1 to 7). 6: - Ansul has not sold any fire extinguishers since that date under the Minimax mark. As for the activities from that date, see point 18 herein. 7: - The Netherlands has been a party to the Convention since 7 July 1884. 8: - OJ 1994 L 336, pp. 214 to 223. 9: - The Trademark Law Treaty 1994 also contains a reference to the Paris Convention. Article 15 stipulates as follows: Any Contracting Party shall comply with the provisions of the Paris Convention which concern marks. 10: - The Spanish version is the only one to have Community trade mark. This is clearly an error as the Directive is not concerned with the Community trade mark. 11: - There is a typographical error in the Spanish version of the Directive which does not affect the English version. 12: - OJ 1994 L 11, p. 1. 13: - See the ninth recital in the preamble. 14: - Bulletin Benelux, 1962-2, p. 59. 15: - Bulletin Benelux, 1962-2, pp. 31 and 32. 16: - Nederlands Trakatenblad 1993, No 12, pp. 1 to 12. 17: - Article 5(1) of this provision stipulates that any interested party may claim that the rights in the trade mark have been extinguished in the circumstances described in Article 5(2). The mark may not be declared extinguished under Article 5(2)(a) if, in the interval from the end of the five-year period referred to and the filing of the application for revocation, normal use of the mark has been started or resumed. However the commencement or resumption of use within a period of three months preceding the filing of the application for revocation shall be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application for revocation may be filed. 18: - The translation of the foregoing provisions of the Uniform Benelux Law on trade marks is an unofficial one. 19: - See the ninth recital in the preamble to the Directive and the judgment in Joined Cases C-414/99 to C-416/99 Zino Davidoff and Others [2001] ECR I-8691, paragraph 42. 20: - Judgment in this case was delivered on 4 October 2001 [2001] ECR I-6959. 21: - The last recital to the Directive states that the provisions of the Directive are to be entirely consistent with those of the Paris Convention. 22: - See in particular Article 2(1). 23: - See point 30 of the Opinion in Koninklijke KPN Nederland. 24: - That statement is today unquestionable although the same was not true in 1925 when the Convention was drawn up. 25: - In contrast to other types of industrial and intellectual property, in the case of the protection of distinctive signs (trade marks, commercial names, indications of origin) it is not the creative or inventive activity of the author that is being protected but the commercial activity of undertakings and, through that, economic public policy. 26: - See the Opinion in Merz & Krell (points 31 and 32), and in Koninklijke KPN Nederland (points 32 and 33). 27: - See, in particular, points 49, 50, 62, 64 and 88, subparagraphs 1 and 4. 28: - The German version of the Directive uses the expression geschäftlichen Verkehr, the French vie des affaires, the English course of trade, the Italian nel commercio and finally the Netherlands economisch verkeer. [Translator's note: the Spanish uses en el tráfico económico]. 29: - The Netherlands uses the term normal. The French has usage sérieux, the Portuguese uso sério, the English genuine use and the German ernsthafte Benutzung. The Italian uses the same adjective as the Spanish: effettivo. 30: - See C. Fernández-Novoa, Fundamentos de derecho de marcas, pub. Montecorvo. S. A. Madrid, 1984, p. 23. 31: - Article 10(2)(a) of the Directive, See also Article 5(2) of the Paris Convention. 32: - In my Opinion in the Sieckmann case (C-273/00), in which judgment has not yet been delivered, I emphasised that advertising is one of the functions of a trade mark (point 19). 33: - See C. Fernández-Novoa, Derecho de marcas, pub. Montecorvo. S. A. Madrid, 1990, pp. 253 and 254. This author adds the exclusive sale of goods bearing the mark to employees in the undertaking's stores as internal use. 34: - See Article 10(2)(b) of the Directive. 35: - Whether a trade mark is being used is a question of fact that must be determined according to rules of evidence. To that effect Rule 22(2) of Commission Regulation (EC) 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 and services in respect of which it is registered, and adds in Rule 22(3) that the evidence is, in principle, to comprise supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing. 36: - For example, Article 17 of the Community Trade Mark Regulation authorises the transfer of a trade mark separately from the sale of the undertaking's other assets. 37: - See Article 10(3) of the Directive. That principle does not specify the scope of this condition. Does it have to be express as where it is exploited by a licensee or is mere tolerance sufficient? Article 19(2) of the Agreement on Trade-Related Aspects of Intellectual Property Rights refers to use subject to the control of its owner.