Genuine use of trademarks by charities clarified

European Union

The European Court of Justice (ECJ) has issued its decision in Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’ (Case C-442/07, December 9 2008), a reference for a preliminary ruling by the Austrian Supreme Patents and Trademarks Tribunal.

The Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’ (BKFR) is a body dedicated 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. It also performs charitable work, such as the collection of gifts in cash or in kind and their distribution to the needy. The BKFR also owns figurative and word trademarks which represent various badges of honour, registered since 1996 in Classes 37 (maintenance work), 41 (cultural activities) and 42 (now 45), in particular for social services. The BKFR awards orders and decorations that correspond to these trademarks; some of its members wear these orders and decorations at various events and when collecting and distributing donations. The marks are printed on invitations to forthcoming events, on stationery and on the association’s correspondence.

The Verein Radetzky-Orden applied to have the trademarks cancelled on the grounds of non-use, maintaining that the BKFR had not used the marks commercially during the preceding five years. The Cancellation Section of the Austrian Patent Office agreed and cancelled the registrations. The BKFR appealed to the Supreme Patents and Trademarks Tribunal, which decided to stay the proceedings and refer the following question to the ECJ for a preliminary ruling:
"Is Article 12(1) of [the First Trademarks Directive (89/104/EEC)] to be construed as meaning that a trademark 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 trademark in announcements for events, on business papers and on advertising material and that trademark is used by the association’s members when collecting and distributing donations inasmuch as those members wear badges featuring that trademark?"
The ECJ answered as follows:
"Article 12(1) [... ] is to be construed as meaning that a trademark is put to genuine use where a non-profit-making association uses the trademark 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 trademark when collecting and distributing donations."
On the question of whether the use by BKFR was genuine, the ECJ held as follows:
"The fact that goods or services are offered on a non-profit-making basis is not decisive.

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.

[…] 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.

It cannot be ruled out, therefore, that trademarks 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.

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.

Where non-profit-making associations register as trademarks 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
However, as the advocate general had observed (for further details please see “Advocate general delivers opinion on use of trademarks by charities”), use of a trademark 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 trademark and not ‘genuine use’. The referring court must now decide whether the BKFR used the trademarks to identify and promote its goods or its services to the general public, or whether it merely made internal use of them.

Arguably, it is regrettable that money donated for charitable causes was later spent on litigation.
Jeremy Phillips, IP consultant to Olswang, London

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