CELEX: 62007CJ0442
Language: en
Date: 2008-12-09
Title: Judgment of the Court (Grand Chamber) of 9 December 2008.#Verein Radetzky-Orden v Bundesvereingigung Kameradschaft "Feldmarschall Radetzky".#Reference for a preliminary ruling: Oberster Patent- und Markensenat - Austria.#Trade marks - Directive 89/104/EEC - Article 12 - Revocation - Marks registered by a non-profit-making association - Concept of ‘genuine use’ of a trade mark - Charitable activities.#Case C-442/07.

Case C-442/07
      Verein Radetzky-Orden
      v
      Bundesvereingigung Kameradschaft ‘Feldmarschall Radetzky’
      (Reference for a preliminary ruling from the Oberster Patent- und Markensenat)
      (Trade marks – Directive 89/104/EEC – Article 12 – Revocation – Marks registered by a non-profit-making association – Concept of ‘genuine use’ of a trade mark – Charitable activities)
      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)
JUDGMENT OF THE COURT (Grand Chamber)
      9 December 2008 (*)
      
      (Trade marks – Directive 89/104/EEC – Article 12 – Revocation – Marks registered by a non-profit-making association – Concept of ‘genuine use’ of a trade mark – Charitable activities)
      In Case C‑442/07,
      REFERENCE for a preliminary ruling under Article 234 EC from the Oberster Patent- und Markensenat (Austria), made by decision
         of 27 June 2007, received at the Court on 27 September 2007, in the proceedings
      
      Verein Radetzky-Orden
      v
      Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’
      THE COURT (Grand Chamber),
      composed of V. Skouris, President, P. Jann, C.W.A. Timmermans, A. Rosas, K. Lenaerts, M. Ilešič (Rapporteur) and A. Ó Caoimh,
         Presidents of Chambers, G. Arestis, A. Borg Barthet, J. Malenovský, U. Lõhmus, E. Levits and L. Bay Larsen, Judges,
      
      Advocate General: J. Mazák,
      Registrar: B. Fülöp, Administrator,
      having regard to the written procedure and further to the hearing on 24 June 2008,
      after considering the observations submitted on behalf of:
      –        the Verein Radetzky-Orden, by E. Fichtenbauer and K. Krebs, Rechtsanwälte,
      –        the Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’, by P. Israiloff, Patentanwalt,
      –        the Italian Government, by I.M. Braguglia, acting as Agent, and W. Ferrante, avvocato dello Stato,
      –        the Commission of the European Communities, by H. Krämer, acting as Agent,
      after hearing the Opinion of the Advocate General at the sitting on 18 September 2008,
      gives the following
      Judgment
      1        This reference for a preliminary ruling concerns the interpretation 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, p. 1; ‘the Directive’).
      
      2        The reference has been made in the course of proceedings between the Verein Radetzky-Orden (‘the Radetzky-Orden’) and the
         Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’ (‘the BKFR’) concerning the revocation, on grounds of lack of genuine
         use, of trade marks owned by the BKFR, which is a non-profit-making association.
      
       Legal context
      3        Under Article 12(1) of the Directive:
      
      ‘A trade mark shall be liable to revocation if, within a continuous period of five years, it has not been put to genuine use
         in the Member State in connection with the goods or services in respect of which it is registered, and there are no proper
         reasons for non-use; …’
      
      4        The 12th recital in the preamble to the Directive states that ‘all Member States of the Community are bound by the [Convention
         for the Protection of Industrial Property signed in Paris on 20 March 1883, last revised in Stockholm on 14 July 1967 and
         amended on 28 September 1979 (United Nations Treaty Series, Vol. 828, No 11851, p. 305; ‘the Paris Convention’)]; whereas it is necessary that the provisions of this Directive are
         entirely consistent with those of the Paris Convention …’
      
      5        In Austrian law, Paragraph 10a of the 1970 Law on the protection of trade marks (Markenschutzgesetz 1970, BGBl. 260/1970;
         ‘the MSchG’) states as follows:
      
      ‘The use of a sign to designate a product or service includes, in particular:
      (1)      affixing the sign to the goods or to the packaging thereof, or to objects in respect of which the service is, or is intended
         to be, provided; 
      
      (2)      offering the goods, or putting them on the market or stocking them for those purposes under that sign, or offering or supplying
         services thereunder;
      
      (3)      importing or exporting the goods under the sign;
      (4)      using the sign on business papers and announcements, and in advertising.’
      6        Paragraph 33a(1) of the MSchG provides as follows:
      
      ‘Anyone may apply for the cancellation of a mark which has been registered in Austria for at least five years or which enjoys
         protection in Austria pursuant to Paragraph 2(2), if that mark has not been put to genuine use in Austria in respect of the
         goods or services for which it was registered (Paragraph 10a) either by the proprietor of the mark or, with his permission,
         by a third party, within the five years preceding the day on which the application for cancellation was lodged, unless the
         proprietor of the mark can justify the non-use.’
      
       The dispute in the main proceedings and the question referred for a preliminary ruling
      7        The BKFR is dedicated, on the one hand, to the preservation of military traditions, such as memorial services for those who
         have fallen in combat, remembrance services, military reunions and the upkeep of war memorials and, on the other, to charitable
         work, such as the collection of gifts in cash or in kind and their distribution to the needy.
      
      8        The BKFR is the proprietor of figurative and word marks representing essentially badges of honour. Those marks were entered
         in the trade mark register of the Austrian Patent Office. Protection began on 8 January 1996. Each of the marks was registered
         for class 37 (in particular, for maintenance work), class 41 (inter alia, for cultural activities) and class 42 (now 45) (in
         particular for social services), in accordance with the International Classification of Goods and Services for the Purposes
         of the Registration of Marks, established by the Nice Agreement of 15 June 1957, as revised and amended.
      
      9        The BKFR awards orders and decorations which correspond to the trade marks at issue in the main proceedings. Some BKFR members
         wear those orders and decorations at various events and when collecting and distributing donations. Finally, the marks are
         printed on invitations to forthcoming events, on stationery and on the association’s correspondence.
      
      10      On 17 August 2004, the Radetzky-Orden sought to have the trade marks cancelled on grounds of non-use, in accordance with Paragraph
         33a of the MSchG. In support of its application, it argued that the BKFR had not used the trade marks commercially over the
         course of the preceding five years.
      
      11      The Cancellation Section of the Austrian Patent Office granted the Radetzky-Orden’s application. The BKFR appealed against
         that decision to the Oberster Patent- und Markensenat.
      
      12      It is in those circumstances that the Oberster Patent- und Markensenat decided to stay proceedings and to refer the following
         question to the Court for a preliminary ruling:
      
      ‘Is Article 12(1) of [the directive] to be construed as meaning that a trade mark is put to (genuine) use to distinguish goods
         and services of one undertaking from those of other undertakings in the case where a non-profit-making association uses the
         trade mark in announcements for events, on business papers and on advertising material and that trade mark is used by the
         association’s members when collecting and distributing donations inasmuch as those members wear badges featuring that trade
         mark?’
      
       The question referred for a preliminary ruling
      13      The concept of ‘genuine use’ within the meaning of Article 12(1) of the directive 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 (Case C‑40/01 Ansul [2003] ECR I‑2439, paragraphs 35 and 36).
      
      14      As the Court has stated, 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
         (Ansul, paragraph 37).
      
      15      Moreover, the financial implications of marks and their use are apparent from the Paris Convention which refers to them as
         ‘trade marks’. As is clear from the 12th recital in the Directive, the latter must be interpreted in accordance with the Paris
         Convention.
      
      16      With regard to the question whether a non-profit-making association, carrying on activities such as those described in paragraphs
         7 and 9 of the present judgment, may be regarded as making genuine use of a trade mark within the meaning of Ansul, it should be pointed out that the fact that goods or services are offered on a non-profit-making basis is not decisive.
      
      17      The fact that a charitable association does not seek to make profit does not mean that its objective cannot be to create and,
         later, to preserve an outlet for its goods or services.
      
      18      In addition, as the Radetzky-Orden admitted in its written observations submitted to the Court, 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.
      
      19      It cannot be ruled out, therefore, that trade marks registered by a non-profit-making association may have a raison d’être,
         in that they protect the association against the possible use in business of identical or similar signs by third persons.
      
      20      As long as the association in question uses the marks of which it is the proprietor to identify and promote the goods or services
         for which they were registered, it is making an actual use of them which constitutes ‘genuine use’ within the meaning of Article
         12(1) of the Directive.
      
      21      Where non-profit-making associations register as trade marks signs which they use to identify their goods or their services,
         they cannot be accused of not making actual use of those marks when in fact they use them for those goods or services.
      
      22      In any event, in accordance with the finding of the Court in paragraph 37 of Ansul, and as the Advocate General pointed out in point 30 of his Opinion, use of a trade mark by a non-profit-making association
         during purely private ceremonies or events, or for the advertisement or announcement of such ceremonies or events, constitutes
         an internal use of the trade mark and not ‘genuine use’ for the purposes of Article 12(1) of the directive.
      
      23      It is for the national court to ascertain whether the BKFR has used the trade marks of which it is the proprietor to identify
         and promote its goods or its services to the general public or whether, on the contrary, it has merely made internal use of
         them.
      
      24      In the light of the foregoing considerations, the answer to the question referred must be that Article 12(1) of the Directive
         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.
      
       Costs
      25      Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court,
         the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs
         of those parties, are not recoverable.
      
      On those grounds, the Court (Grand Chamber) hereby rules:
      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 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.
      [Signatures]
      * Language of the case: German.