Where the proprietor of a mark affixes that mark to items that it gives, free of charge, to purchasers of its goods, it does not make genuine use of that mark in respect of the class covering those items.
"18. It follows from that concept of ‘genuine use’ that the protection that the mark confers and the consequences of registering it in terms of enforceability vis-à-vis third parties cannot continue to operate if the mark loses its commercial raison d’être, which is to create or preserve an outlet for the goods or services that bear the sign of which it is composed, as distinct from the goods or ser-vices of other undertakings (Ansul, paragraph 37, and Verein Radetzky-Orden, paragraph 14).
19. As the Commission submitted in its observations to the Court and as the Advocate General stated in points 45 and 55 of his Opinion, it is essential, in the light of the number of marks that are registered and the conflicts that are likely to arise between them, to main-tain the rights conferred by a mark for a given class of goods or services only where that mark has been used on the market for goods or services belonging to that class.
20. For the reasons set out in points 48 and 56 of that Opin-ion, that condition is not fulfilled where promo-tional items are handed out as a reward for the purchase of other goods and to encourage the sale of the latter.
21. In such a situation, those items are not distributed in any way with the aim of penetrating the market for goods in the same class. In those circumstances, affix-ing the mark to those items does not contribute to creat-ing an outlet for those items or to distinguishing, in the interest of the customer, those items from the goods of other undertakings.
22. In the light of the foregoing considerations, the answer to the question referred is that Articles 10(1) and 12(1) of the directive must be interpreted as mean-ing that, where the proprietor of a mark affixes that mark to items that it gives, free of charge, to purchasers of its goods, it does not make genuine use of that mark in re-spect of the class covering those items."
IPPT20090115, Siberquelle v Maselli-Strickmode - Wellness
C495/07 - ECLI:EU:C:2009:10
