Silberquelle v Maselli - Genuine Use does not apply to promotional "freebies"

In C-495/07 Silberquelle GmbH v Maselli-Strickmode, the ECJ has held that there is not genuine use of a registered trade mark where promotional items (alcohol-free drinks) bearing a registered trade mark are handed out as a gift to those who purchased clothing of the registered proprietor. In a short judgment, the ECJ held that such was not genuine use. It held that where items are not distributed "with the aim of penetrating the market for those goods", there is not genuine use. The ECJ referred to Ansul where the ECJ stated that the commercial raison d'etre of a mark is to create or preserve an outlet for the goods of services for which it is used.

This judgment is interesting. At one level, there plainly was use of the registered mark in relation to the specified goods. However, the intention of the registered proprietor was not to create a market for the goods bearing the mark. Yet, there was no suggestion that the use of the mark was intended for the purpose of maintaining the registration (i.e. sham use) nor was use internal. This case suggests that non-internal non-sham use can still not be genuine use if there was no intention on the registered proprietor to create or maintain a market share regardless as the level of familiarisation of the public with that mark. Thus, one can have the strange situation where the public could be extremely familiar with a mark and its use in relation to goods or services protected by a registered mark and yet there has been no genuine use within the meaning of the Trade Mark Regulation or Directive.

Would the case have been different if the trade mark proprietor considered that it was an excellent way of promoting its alcohol-free products by handing them out free when customers purchased its clothing? This could have been the case if its pre-existing business was in clothing but it wished to diversify into alcohol-free products. Presumably, if such had been the facts of Silberquelle, the conclusion would have been that such was with the aim of creating a market for alcohol-free goods and thus such was genuine use. Yet, it is odd that such a subtle change of facts would affect the outcome. After all, in both cases, the registered mark is actually used on goods covered by the registration.