Advocate general delivers opinion on use of trademarks by charities

European Union
In Verein Radetzky-Orden v Bundesvereinigung Kameradschaft Feldmarschall Radetzky (Case C-442/07, September 18 2008), Advocate General Mazák has held that a trademark is put to genuine use where a non-profit-making association uses the trademark in announcements for public fundraising events, when collecting donations from the public and distributing donations, on business papers addressed to members of the public and on advertising material soliciting donations from the public, where the trademark has been registered in connection with such services.  
The Austrian Supreme Patents and Trademarks Tribunal referred a question to the European Court of Justice (ECJ) for a preliminary ruling on the interpretation of Article 12(1) of the First Trademarks Directive (89/104/EEC). In the underlying case, the Verein Radetzky-Orden sought the revocation of trademarks owned by Bundesvereinigung Kameradschaft Feldmarschall Radetzky (BKFR), a non-profit-making association, on grounds of absence of genuine use.
The BKFR does not sell any goods or provide any services for remuneration. Its activity consists in the preservation of military traditions and in charitable work, such as the collection of money and donations in kind and their distribution to the needy. It is the proprietor of several word and figurative marks for services in Class 45 of the Nice Classification (charitable work), among others.
The BKFR also founded the Radetzky Order, which awards orders and decorations corresponding to its trademarks. Members wear the decorations at various events, and when collecting and distributing money and donations in kind. The marks are printed on invitations to events, on stationery and on the association’s advertising material.
Radetzky-Orden sought the cancellation of the BKFR's marks on the grounds that the latter had not used its marks commercially over the past five years. According to Radetzky-Orden, the term 'genuine use' under Article 12 of the directive applies only to commercial activities or entrepreneurial activities for profit. Activities that are exclusively non-profit-making fall outside the scope of trademark protection.
In response, the BKFR argued that charitable organizations compete against each other and act like entrepreneurs in their field of activity, even where the charities’ goods and services are made available to the needy. The signs of such organizations (eg, marks, decorations, insignias and coats of arms) indicate the origin of the goods and services in order to distinguish them from those of other organizations.
Advocate General Mazák considered that:
"the use of a trademark by a non-profit-making association when collecting funds from the public and distributing such funds, where the trademark has been registered in connection with such services, serves as an indication to donors or potential donors of the identity of the association in question and the purposes for which the funds are used, and thus constitutes a genuine use of a trademark in accordance with Article 12(1) of [the directive]."
However, the advocate general also held that: 
"the use of a trademark by a non-profit-making association during or for the announcement or advertisement of purely private ceremonies or events involving existing members of that association constitutes an internal use of that trademark and thus does not constitute a genuine use of a trademark for the purposes of Article 12(1) of [the directive]."
Therefore, according to the advocate general, the award of badges incorporating a trademark to existing members of a non-profit-making association in gatherings where the public is excluded appears to constitute an internal use of the trademark. Whether the ECJ will follow the opinion of the advocate general remains to be seen.
Angela Heffermann, Sattler & Schanda Rechtsanwälte, Vienna

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