Advocate General Mazak delivered his Opinion today in Case C‑442/07 Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’, a reference for a preliminary ruling from the Oberster Patent- und Markensenat (Austria). The Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’ (BKFR), a non-profit-making association, does not sell any goods or provide any services for remuneration. Its activity consists in the preservation of military traditions, such as the organisation of memorial services for members of the armed forces who have died in combat, remembrance services, military reunions and the upkeep of war memorials. It also does charitable work, such as the collection of money and donations in kind and their distribution to the needy. BKFR also owns the Austrian word and figurative marks for goods and services in classes 37 (upkeep of war memorials), 41 (entertainment; sporting and cultural activities; organisation of military reunions) and 45 (charitable work for the needy).
Additionally the BKFR founded a Radetzky Order, within which orders and decorations are awarded which corresponded to its trade marks. Members of the order wear the decorations at various events and when collecting and distributing money and donations in kind. The marks are printed on invitations to events, on stationery and on the association’s advertising material.
The Verein Radetzky-Orden ('Orden') applied to have BKFR's trade marks cancelled on the grounds of non-use, claiming that BKFR had not used the trade marks commercially over the course of the previous five years. The Austrian Patent Office cancelled the marks, whereupon BKFR appealed to the Oberster Patent- und Markensenat. That court decided to stay the proceedings and to refer the following question to the Court for a preliminary ruling:
"Is Article 12(1) of [Directive 89/104] to be construed as meaning that a trade mark is put to (genuine) use to distinguish goods and services of one undertaking from those of other undertakings in the case where a non-profit-making association uses the trade mark in announcements for events, on business papers and on advertising material and that trade mark is used by the association’s members when collecting and distributing donations inasmuch as those members wear badges featuring that trade mark?".What did the Advocate General say? He advised the European Court of Justice to rule as follows:
"Article 12(1) of First Council Directive 89/104 ... should be construed as meaning that a trade mark is put to genuine use where a non-profit-making association uses the trade mark, inter alia, in announcements for public fund-raising events, when collecting donations from the public and distributing donations, on business papers addressed to members of the public and on advertising material soliciting donations from the public, where the trade mark has been registered in connection with such services. It is thus for the Oberster Patent- und Markensenat to assess the facts in the main proceedings in the light of that guidance".The IPKat says, the interesting bit in this Opinion comes at the end when the AG says:
"28. The contention by the Orden that the purely non-profit-making activity of collecting and distributing donations cannot be protected by trade mark law is ... unfounded. ... ‘charitable fund raising’ is specifically listed in Class 36 of the Nice Agreement. Moreover, contrary to the submissions of the Orden, I do not consider that the terms ‘using in the course of trade’ as contained in Article 5 of Directive 89/104, which enumerate the rights conferred by a trade mark, necessitates that goods and services be supplied for profit or indeed for consideration. The question of whether the proprietor of a trade mark uses that sign for the purposes of personal enrichment is thus not relevant when assessing whether the trade mark is being put to genuine use in accordance with Article 12(1) of Directive 89/104.The IPKat thinks this makes good sense, since it appears to respect the terms in which the Directive is couched as well as the case law of the Court; Merpel's not so sure: the division of the activities of charitable organisations into external and internal ones does not take into account that there is likely to be a close connection between the two in the eyes of the organisation itself and in the view of its members.
29. In that regard, I consider that the use of a trade mark by a non-profit-making association when collecting funds from the public and distributing such funds, where the trade mark has been registered in connection with such services, serves as an indication to donors, or potential donors, of the identity of the association in question and the purposes for which the funds are used and thus constitutes a genuine use of a trade mark in accordance with Article 12(1) of Directive 89/104.
30. However, in the light of the ruling of the Court in Ansul, I consider that the use of a trade mark by a non-profit-making association during or for the announcement or advertisement of purely private ceremonies or events involving existing members of that association constitutes an internal use of that trade mark and would thus not constitute a genuine use of a trade mark for the purposes of Article 12(1) of Directive 89/104. Thus, in my view, the award of badges incorporating a trade mark to existing members of a non-profit-making association in gatherings where the public is excluded would appear to be an internal use of the trade mark. Moreover, I consider that the use of a trade mark on business papers when addressing existing members of a non-profit-making association is, in principle, an internal use of the trade mark which would not constitute a genuine use of a trade mark. In such circumstances, it would appear that the registered trade mark is being used in a purely private manner and not in the course of trade".