Opinion of the Advocate General — ECLI:EU:C:2008:515
Date: 2008-09-18
Language of the case: German
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Austria

Summary of the Judgment 1. Approximation of laws – Trade marks – Directive 89/104 – Grounds for revocation of the trade mark (Council Directive 89/104, Art. 12(1)) 2. Approximation of laws – Trade marks – Directive 89/104 – Grounds for revocation of the trade mark (Council Directive 89/104, Art. 12(1)) 1. The concept of ‘genuine use’ within the meaning of Article 12(1) of First Directive 89/104 to approximate the laws of the Member States relating to trade marks must be understood to denote use that is not merely token, serving solely to preserve the rights conferred by the mark. Such use must be actual use, consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin. It follows that the concept of ‘genuine use’ of the mark entails 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. The protection that the mark confers and the consequences of registering it in terms of enforceability vis-à-vis third parties cannot continue to operate if the mark loses its commercial raison d’être, which is to create or preserve an outlet for the goods or services that bear the sign of which it is composed, as distinct from the goods or services of other undertakings. (see paras 13-14) 2. Article 12(1) of First Directive 89/104 to approximate the laws of the Member States relating to trade marks is to be construed as meaning that a trade mark is put to genuine use where a non-profit-making 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 fact that a charitable association does not seek to make a profit does not mean that its objective cannot be to create and, later, to preserve an outlet for its goods or services. In addition, paid welfare services exist. In modern society, various types of non-profit-making association have sprung up which, at first sight, offer their services free but which, in reality, are financed through subsidies or receive payment in various forms. (see paras 17-18, 24)