CELEX: C2003/112/04
Language: en
Date: 2003-05-10 00:00:00
Title: Judgment of the Court of 20 March 2003 in Case C-291/00 (Reference for a preliminary ruling from the Tribunal de Grande Instance de Paris): LTJ Diffusion SA v Sadas Vertbaudet SA (Trade marks — Approximation of laws — Directive 89/104/EEC — Article 5(1)(a) — Notion of sign which is identical with the trade mark — Use of the distinctive element of the mark to the exclusion of other elements — Use of all the elements making up the trade mark but with the addition of other elements)

10.5.2003                EN                          Official Journal of the European Union                                                   C 112/3
                 JUDGMENT OF THE COURT                                                          JUDGMENT OF THE COURT
                                                                                                        of 11 March 2003
                          of 20 March 2003
                                                                             in Case C-40/01 (Reference for a preliminary ruling from
in Case C-291/00 (Reference for a preliminary ruling from                    the Hoge Raad der Nederlanden): Ansul BV v Ajax
the Tribunal de Grande Instance de Paris): LTJ Diffusion                                             Brandbeveiliging BV ( 1)
                  SA v Sadas Vertbaudet SA (1)
                                                                             (Trade marks — Directive 89/104/EEC — Article 12(1) —
                                                                             Revocation of trade mark owner’s rights — Concept of
(Trade marks — Approximation of laws — Directive 89/                         genuine use of a trade mark — Maintenance of goods already
104/EEC — Article 5(1)(a) — Notion of sign which is                                sold and sales of replacement parts and accessories)
identical with the trade mark — Use of the distinctive
element of the mark to the exclusion of other elements —
Use of all the elements making up the trade mark but with                                                 (2003/C 112/05)
                  the addition of other elements)
                                                                                                    (Language of the case: Dutch)
                           (2003/C 112/04)
                                                                             (Provisional translation; the definitive translation will be published
                                                                                                   in the European Court Reports)
                     (Language of the case: French)
(Provisional translation; the definitive translation will be published       In Case C-40/01: Reference to the Court under Article 234 EC
                    in the European Court Reports)                           by the Hoge Raad der Nederlanden (Netherlands) for a
                                                                             preliminary ruling in the proceedings pending before that
                                                                             court between Ansul BV and Ajax Brandbeveiliging BV, on the
                                                                             interpretation of Article 12(1) of 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,
In Case C-291/00: Reference to the Court under Article 234                   p. 1), the Court, composed of: G. C. Rodríguez Iglesias,
EC by the Tribunal de grande instance de Paris (France) for a                President, J.-P. Puissochet (Rapporteur), M. Wathelet and
preliminary ruling in the proceedings pending before that                    C. W. A. Timmermans, Presidents of Chamber, C. Gulmann,
court between LTJ Diffusion SA and Sadas Vertbaudet SA, on                   A. La Pergola, P. Jann, V. Skouris, F. Macken, N. Colneric and
the interpretation of Article 5(1)(a) of First Council Directive             S. von Bahr, Judges; D. Ruiz-Jarabo Colomer, Advocate
89/104/EEC of 21 December 1988 to approximate the laws                       General; M.-F. Contet, Principal Administrator, for the Regis-
of the Member States relating to trade marks (OJ 1989 L 40,                  trar, has given a judgment on 11 March 2003, in which it has
p. 1), the Court, composed of: G. C. Rodríguez Iglesias,                     ruled:
President, M. Wathelet and R. Schintgen (Presidents of Cham-
bers), C. Gulmann, P. Jann, F. Macken (Rapporteur), N. Colner-
ic, S. von Bahr and J. N. Cunha Rodrigues, Judges; F. G. Jacobs,             1.     Article 12(1) of First Council Directive 89/104/EEC of
Advocate General; D. Louterman-Hubeau, Head of Division,                            21 December 1988 to approximate the laws of the Member
for the Registrar, has given a judgment on 20 March 2003, in                        States relating to trade marks must be interpreted as meaning
which it has ruled:                                                                 that there is ‘genuine use’ of a trade mark where the mark is
                                                                                    used in accordance with its essential function, which is to
                                                                                    guarantee the identity of the origin of the goods or services for
                                                                                    which it is registered, in order to create or preserve an outlet for
Article 5(1)(a) of First Council Directive 89/104/EEC of 21 Decem-                  those goods or services; genuine use does not include token use
ber 1988 to approximate the laws of the Member States relating to                   for the sole purpose of preserving the rights conferred by the
trade marks must be interpreted as meaning that a sign is identical                 mark. When assessing whether use of the trade mark is genuine,
with the trade mark where it reproduces, without any modification or                regard must be had to all the facts and circumstances relevant
addition, all the elements constituting the trade mark or where,                    to establishing whether the commercial exploitation of the mark
viewed as a whole, it contains differences so insignificant that they               is real, particularly whether such use is viewed as warranted in
may go unnoticed by an average consumer.                                            the economic sector concerned to maintain or create a share in
                                                                                    the market for the goods or services protected by the mark, the
                                                                                    nature of the goods or services at issue, the characteristics of the
( 1) OJ C 273 of 23.9.2000.
                                                                                    market and the scale and frequency of use of the mark. The fact
                                                                                    that a mark that is not used for goods newly available on the
                                                                                    market but for goods that were sold in the past does not mean
                                                                                    that its use is not genuine, if the proprietor makes actual use of
                                                                                    the same mark for component parts that are integral to the