ECJ defines trademark 'genuine use' in landmark case

The European Court of Justice (ECJ) has just set out the test to be applied when deciding whether or not a trademark has been put to genuine use. The ECJ was ruling on questions referred by the Supreme Court of the Netherlands in Ansul BV v Ajax Brandbeveiliging BV.

Ansul, a producer of fire extinguishers, registered the mark MINIMAX in Benelux in 1971 but ceased to use it on new products in 1989. It does, however, repair used equipment and make component parts bearing the mark. In 1994 Ajax started using the MINIMAX mark in Benelux for fire extinguishers. Ansul objected, and soon afterwards filed an application for the MINIMAX mark in relation to maintenance and repair of fire extinguishers, which was granted

Ajax brought an action before the Rotterdam District Court to obtain the cancellation of Ansul's marks on the basis of non-use for the 1971 mark and bad-faith registration for the 1994 mark. Ansul responded by filing for an injunction barring Ajax from using MINIMAX in Benelux. The Rotterdam court dismissed Ajax's claims and upheld Ansul's counterclaim. Ajax appealed to The Hague Regional Court of Appeal.

The appellate court reversed the lower court decision. It found that Ansul's use of the mark since 1989 did not amount to genuine use under either Article 5(3) of the Uniform Benelux Law on Trademarks or Article 12(1) of the Community Trademark Directive. Ansul appealed to the Supreme Court of the Netherlands.

The Supreme Court considered that the case depended on the interpretation of what constitutes genuine use of a trademark under Benelux and EU law. Accordingly, the court referred the case to the ECJ to decide whether there can be genuine use where a mark has not been used in relation to new products for over five years.

The ECJ recognized the importance of providing a universal interpretation of the genuine-use requirement. It held that the use had to be more than token for the sole purpose of preserving trademark rights. Such use also had to relate to goods or services either already marketed or about to be marketed and, in the latter case, the use had to be for the purpose of securing customers. However, it also found that genuine use may be found where a mark is used (i) for component parts that are integral to the structure of goods sold previously under that mark, and (ii) for goods or services directly connected with the goods previously sold under that mark.

Nevertheless, the ECJ refused to comment on whether the use of MINIMAX by Ansul would fulfil the criteria for genuine use it had just laid down.

Matthew Harris and Rachel Montagnon, Herbert Smith, London