Ansul BV v Ajax Brandbeveiliging BV.
Date: 2003-03-11
25.  It is necessary as a preliminary matter to determine whether, in relation to situations such as that in the main proceedings, the concept of   "genuine use"   in Articles 10 and 12 of the Directive is to be interpreted uniformly within the Community legal order.
26.  It follows both from the requirements of the uniform application of Community law and the principle of equality that the terms of a provision of Community law which make no express reference to the law of the Member States for the purpose of determining its meaning and scope must normally be given an autonomous and uniform interpretation throughout the Community; that interpretation must take into account the context of the provision and the purpose of the legislation in question (Case C-287/98   Linster   [2000] ECR I-6917, paragraph 43).
27.  Although the third recital in the preamble to the Directive states that   "it does not appear to be necessary at present to undertake full-scale approximation of the trade mark laws of the Member States"  , the Directive none the less provides for harmonisation in relation to substantive rules of central importance in this sphere, that is to say, according to the same recital, the rules concerning the provisions of national law which most directly affect the functioning of the internal market, and the recital does not preclude the harmonisation relating to those rules from being complete (Case C-355/96   Silhouette International Schmied   [1998] ECR I-4799, paragraph 23).
28.  Thus it is clear from the seventh recital in the preamble to the Directive that   "attainment of the objectives at which this approximation [of the laws of the Member States] is aiming requires that the conditions for obtaining and continuing to hold a registered trade mark are, in general, identical in all Member States"  . The eighth recital states that   "in order to reduce the total number of trade marks registered and protected in the Community and, consequently, the number of conflicts which arise between them, it is essential to require that registered trade marks must actually be used or, if not used, be subject to revocation"  , and the ninth recital states that   "it is fundamental, in order to facilitate the free circulation of goods and services, to ensure that henceforth registered trade marks enjoy the same protection under the legal systems of all the Member States"  . Articles 10 to 15 of the Directive lay down the substantive conditions to which both maintenance of the rights conferred by the use of a mark on its proprietor and challenges to those rights on grounds,   inter alia,   of lack of genuine use ─ a concept which is essential to maintaining rights to the mark ─ are subject.
29.  It is evident from all the provisions cited in the previous paragraph that it was the Community legislature's intention that the maintenance of rights in a trade mark be subject to the same condition regarding genuine use in all the Member States, so that the level of protection trade marks enjoy does not vary according to the legal system concerned (see, to that effect, Joined Cases C-414/99 to C-416/99   Zino Davidoff and Levi Strauss   [2001] ECR I-8691, paragraphs 41 and 42).
30.  The notion of   "genuine use"   also appears in Articles 15 and 50 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) as a prerequisite for revocation of the rights conferred by such a trade mark.
31.  It is therefore incumbent on the Court to give a uniform interpretation of the concept of   "genuine use"  , as used in Articles 10 and 12 of the Directive.
35.  Next, as Ansul argued, the eighth recital in the preamble to the Directive states that trade marks   "must actually be used or, if not used, be subject to revocation"  .   "Genuine use"   therefore means actual use of the mark. That approach is confirmed,   inter alia,   by the Dutch version of the Directive, which uses in the eighth recital the words   "werkelijk wordt gebruikt"  , and by other language versions such as the Spanish ( "uso efectivo"  ), Italian ( "uso effettivo"  ) and English ( "genuine use"  ).
36.  "Genuine use"   must therefore be understood to denote use that is not merely token, serving solely to preserve the rights conferred by the mark. Such use must be 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.
37.  It follows that   "genuine use"   of the mark entails use of the mark on the market for the goods or services protected by that mark and not just internal use by the undertaking concerned. The protection 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. Use of the mark must therefore relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns. Such use may be either by the trade mark proprietor or, as envisaged in Article 10(3) of the Directive, by a third party with authority to use the mark.
39.  Assessing the circumstances of the case may thus include giving consideration,   inter alia  , to the nature of the goods or service at issue, the characteristics of the market concerned and the scale and frequency of use of the mark. Use of the mark need not, therefore, always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market.
40.  Use of the mark may also in certain circumstances be genuine for goods in respect of which it is registered that were sold at one time but are no longer available.
41.  That applies,   inter alia  , where the proprietor of the trade mark under which such goods were put on the market sells parts which are integral to the make-up or structure of the goods previously sold, and for which he makes actual use of the same mark under the conditions described in paragraphs 35 to 39 of this judgment. Since the parts are integral to those goods and are sold under the same mark, genuine use of the mark for those parts must be considered to relate to the goods previously sold and to serve to preserve the proprietor's rights in respect of those goods.
42.  The same may be true where the trade mark proprietor makes actual use of the mark, under the same conditions, for goods and services which, though not integral to the make-up or structure of the goods previously sold, are directly related to those goods and intended to meet the needs of customers of those goods. That may apply to after-sales services, such as the sale of accessories or related parts, or the supply of maintenance and repair services.
43.  In the light of the foregoing considerations the reply to the first question must be that Article 12(1) of the Directive must be interpreted as meaning 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 those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in 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 those goods or services, the characteristics of the market and the scale and frequency of use of the mark. The fact that a mark 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 make-up or structure of such goods, or for goods or services directly connected with the goods previously sold and intended to meet the needs of customers of those goods.
The second question
44.  By its second question the national court is essentially asking whether, in the light of the reply to the first question, the use by Ansul of the Minimax mark from 1989 to 1994 in the context of the commercial activities described at paragraph 11 of this judgment is   "normal"   for purposes of the UBL or   "genuine"   for the purposes of Article 12 of the Directive.
45.  However, it is not for the Court to make that assessment. It is for the national court, under the division of functions provided for by Article 234 EC, to apply the rules of Community law, as interpreted by the Court, to the individual case before it (see Case C-320/88   Shipping and Forwarding Enterprise Safe   [1990] ECR I-285, paragraph 11).
46.  In those circumstances the reply to the second question must be that it is for the national court to draw the consequences for the resolution of the dispute before it of the interpretation of the Community law concept of   "genuine use"   of the trade mark given in the reply to the first question referred for a preliminary ruling.