Ansul BV v Ajax Brandbeveiliging BV

Date

11 January 2003

Legislation

Trade Marks Act 1994 s10(3)
Directive 89/104, Article 12(1)

Keywords

revocation for non-use; genuine use

Counsel

Unknown

Solicitors

unknown.

Judges

G.C. Rodríguez Iglesias, President, J.-P. Puissochet (Rapporteur), M. Wathelet and C.W.A. Timmermans, Presidents of Chamber, C. Gulmann, A. La Pergola, P. Jann, V. Skouris, F. Macken, N. Colneric and S. von Bahr, Judges. Advocate General D. Ruiz-Jarabo Colomer.

Court

European Court of Justice

Reported

Case C-40/01 (European Court of Justice), [2005] Ch 97, [2003] RPC 40

Summary

Ansul had been the proprietor of a word trade mark, MINIMAX, which was registered at the Benelux trade mark office for various classes of goods, essentially comprising fire extinguishers and associated products, since 1971. In 1988 the safety authorisation for the fire extinguishers sold by Ansul under the MINIMAX trade mark expired. Since 1989 at the latest, therefore, Ansul had no longer been selling fire extinguishers under that mark.

From 1989 to 1994 Ansul none-the-less sold component parts and extinguishing substances for fire extinguishers bearing the mark to undertakings with responsibility for maintaining them. During the same period it also maintained, checked and repaired equipment bearing the MINIMAX mark itself, used the mark on invoices relating to those services and affixed stickers bearing the mark and strips bearing the words 'Gebruiksklaar Minimax' (Ready for use with Minimax) to the equipment. Ansul also sold such stickers and strips to companies that maintain fire extinguishers.

The issue of whether the MINIMAX mark should be revoked came up for consideration following a later trade mark filing. The Regional Court of Appeal in Netherlands considered the revocation and concluded that Ansul had not been putting the MINIMAX trade mark to normal use since 1989. Ansul then appealed to the Hoge Raad der Nederlanden, which in turn referred a number of questions to the ECJ for a preliminary ruling concerning the liability of trademarks for revocation for non-use.

Decision

The ECJ concluded that:

• "Genuine use" must be understood to denote use that is not merely token, serving solely to preserve the rights conferred by the mark.
• 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.
• Use of the mark must 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.
• Finally, when assessing whether there has been genuine use of the trade mark, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, in particular 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 principles set out in this case should be read in conjunction with those set out by the Court of Appeal in Budejovicky Budvar Narodni Podnik v Anheuser-Busch Inc (BUD and BUDWEISER BUDBRAU Trade Mark Revocation) reported at [2003] RPC 25.

The criteria for genuine use have also been considered in detail by the Court of Appeal in Laboratoires Goemar SA v La Mer Technology Inc [2006] F.S.R. 5.