Re, Trade Marks Act 1994

Where a national court has referred questions on genuine use of a trade mark to the Court of Justice, an intervening ruling permits withdrawal only of questions that it sufficiently answers. The reference should continue where the ruling leaves central issues unresolved, including whether a de minimis rule exists and how any minimum level of use should be assessed. The summary procedure under Article 104(3) of the Rules of Procedure is inappropriate where the answer is not clearly deducible from existing case law and the issue admits of reasonable doubt.

On an earlier appeal from the Trade Mark Registry, the court had referred questions concerning the meaning of genuine use under Articles 10(1) and 12(1) of the Trade Marks Directive (89/104) to the Court of Justice.

Following the ruling in Ansul (C-40/01), the Court of Justice asked whether the reference should be pursued and indicated that the Article 104(3) procedure might be used. The parties agreed that Ansul answered question 5 but did not resolve the central questions concerning the relevance of the extent of use, any de minimis threshold, and the assessment of tiny use motivated only by genuine commercial activity.

1. Reference partly withdrawn. The court agreed with the parties that Ansul sufficiently answered question 5. That question was therefore withdrawn.
2. The remaining questions were not rendered acte clair by Ansul. In particular, questions 3 and 4, concerning whether a de minimis rule exists and, if so, what it requires, remained insufficiently addressed. The unresolved issue included cases where the use was tiny but had only a genuine commercial motive.
3. The court declined to use the Article 104(3) procedure of the Rules of Procedure of the Court of Justice for the remaining questions. That procedure was unsuitable because the answers could not clearly be deduced from existing case law and the issues admitted of reasonable doubt.
4. The Court of Justice was accordingly asked to rule on the remaining questions without using the Article 104(3) procedure.

• High Court (Chancery Division): On appeal from the Trade Mark Registry, the court continued the reference to the Court of Justice on the unresolved questions and withdrew question 5.