Not using a trade mark

An Austrian company, Maselli, sells clothing under its brand WELLNESS.  It has the trade mark registered for clothing in class 25 and also in classes 16 (for printed matter) and class 32 (for alcohol free drinks).  It gave away bottles of a non-alcoholic drink bearing the WELLNESS brand, but never sold the drinks independently of the clothing.

On application by Silberquelle, a producer of alcohol free drinks,  the ECJ has ruled that affixing the mark to goods, which are given away free of charge to purchasers of other goods, is not genuine use of the trade mark for the free goods in the EU.

That is, it should follow that Maselli’s mark will be revoked.

Here, of course, there has to be use as a trade mark and the use (as a trade mark) has to be in good faith see s. 92 and Gallo v Lion Nathan

As the IPKat asks, what happens to a newspaper’s trade mark where the newspaper is given away free?

Ever since the old Irish case about “Golden Pages” TM, where a classified directory was given away for free, but contained paid advertising, we have thought the trade mark was being used in the course of trade (or in more modern parlance, in good faith as a trade mark).  Wonder if that’s still the case?

C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH

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