ECJ Upholds Branding by Charities

The ECJ recently affirmed that non-profit use of a registered trademark may suffice to see off a non-use challenge.

The decision in Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’ (Case C-442/07) confirms that charities who register their names and logos as trademarks need not prove that they have used them for profit in order to maintain the rights in the event of a non-use challenge. 

Previously the law was unclear on whether a charity or other non-profit organisation could meet the use requirements for maintaining a trademark registration. The outcome in Radetzky confirms that they can, and that the cost and effort invested in protecting their names and logos is indeed worthwhile. This is welcome news at a time when charities are finding it harder than ever to fill their coffers, and when competition for donations is high.

Charities still need to prove that their registered marks have been used in an outward-facing manner, rather than just for member-only communications or events. In most cases, however, brands represent the charity to the outside world as well as to members, and this requirement is unlikely to be onerous.

Other types of non-profit use, such as promotional give-aways, may not suffice on their own to maintain a registration. This is highly fact-dependent, however, and advice should be sought in cases where such use is the only use being made of a mark.

For a more detailed summary, please see “Charitable and Promotional Use Confound ECJ” in the Spring 2009 issue of Make Your Mark. Charities or businesses with questions on how the ruling affects them are welcome to contact the Jenkins Trademarks Group.