On Tuesday 18 November Advocate General Ruiz-Jarabo Colomer gave his Opinion in Case C-497/07 Silberquelle GmbH v Maselli-Strickmode GmbH. Since this Opinion is published in a limited selection of official EU languages, Class 46 is indebted to Katja Weckström for furnishing the following free translation and short summary.

The Advocate General has advised the Court to rule that Articles 10.1 and 10.2 of Directive 89/104/EEC on the approximation of the trade mark laws of the member states shall be interpreted so that use of a trade mark for non-alcoholic beverages that consumers receive for free when buying textile products sold by the trade mark owner does not constitute genuine use within the meaning of Articles 10.1 and 10.2 of that Directive.

AG Ruiz-Jarabo Colomer likens the situation at hand to a token use, or a mere symbolic use that would allow for dead-weight trade marks to remain on the trade mark register. However, he emphasizes that the analogy is imperfect, since use of a trade mark in advertising is clearly recognized as a form of genuine use of a trade mark, and is within the scope of the trade mark right. To accept the proposition in this case that mere token use on the beverage market without genuine use on that market would allow blocking the use of the mark on that market altogether would be incompatible with the underlying principles of the Directive and the function of the Register to maintain a competitive market.

The opinion is anchored in unfair competition law, and notes that the Directive is only concerned with harmonizing the rules on registration of trade marks, not on resolving conflicts regarding the subsequent use of them. Nonetheless, AG Ruiz-Jarabo Colomer refers to the 8th recital of the Directive to find competition infused interpretative guidance. A competitor is only required to respect marks in his own and nearby markets, and cannot be required to search for conflicting marks on every conceivable market. Since the essential function of trade marks is to allow consumers to distinguish between competing products, there can be no genuine use of a trade mark where no consumers could conceivably be confused, because the marks in question are not present on the same market. It is the trade mark owner’s obligation to make genuine use of its trade mark to secure its right (ie there is no protection for strategic mistakes). In line with maintaining a competitive market other market actors must have a corresponding right to ask for the removal of dead trademarks from the register and consequently register a mark that they use or intend to genuinely use.

Finally it is to be noted that the case at hand involves only traditional marks, and the Advocate General clearly states that the same reasoning does not apply to well-known marks or those with a high degree of reputation.