Use of mark in connection with resale of old stock is not genuine use

Denmark

In Cycleeurope AB v Dansk Supermarked A/S (Case V-18-09, January 9 2012), the Maritime and Commercial Court has cancelled the trademark PUCH due to lack of use.

The PUCH mark has been registered in Denmark since 1940 for motorcycles, bicycles and certain accessories. The current owner of the registration is Magna Steyr AG & Co KG, which owns those parts of the business remaining after several restructurings of Steyr-Daimler-Puch AG. The company was originally founded as Puchwerke AG by Johan Puch in 1889, to produce bicycles, cars, motorcycles, scooters and mopeds in Graz, Austria.

The production of two-wheeled vehicles ceased in 1987, following which the motorcycle division was sold to Italian company Piaggio. An Indian company, Hero, bought the production line for the moped Puch Maxi, of which 1.8 million had previously been made. The PUCH mark has never been used for bicycles in Denmark.

In 2007 the defendant obtained a Danish trademark registration for the word mark PUCH for "scooters, bicycles, including electrical ones" in Class 12 of the Nice Classification. In 2008 it asked the Trademarks Office to delete the 1940 PUCH registration, due to lack of use.

The plaintiff, which was licensed to use the PUCH mark on behalf of the owner, Magna Steyr, brought the case to court.

The court found that the trademark had not been used in Denmark since 1987. Although it was still possible to buy spare parts for Puch mopeds, these spare parts originated not from the plaintiff, but from a small dealer that still had a stock of old spare parts. The court ruled that use of the PUCH mark in connection with resale from old stock could not be regarded as normal marketing activity by the trademark owner. Consequently, such a sale of spare parts could not be considered as:

  • genuine use of the trademark in Denmark for those goods for which the trademark owner had registered the mark; or
  • use with the trademark owner’s consent.

The court therefore ruled that use of the trademark had ended over five years before the application for cancellation. The court thus ordered the cancellation of the mark.

It further found that, although many Danes still connect the designation PUCH with mopeds, the designation could not be considered as a well-known foreign trademark; therefore, the defendant's registration and use of the PUCH mark could not be prevented.

Mads Marstrand-Jørgensen, Norsker & Co, Copenhagen

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