What is the „starting date” of the continuous five-year period for non-use of a EUTM which could lead to the revocation of the trade mark protection?

On a preliminary ruling request from the Bundesgerichtshof (Federal Court of Justice, Germany), CJEU declared that the EUTM unitary character is still a prime concern over the different national interpretations and treatment of EUTM registrations.

Background

The interpretation request was made in proceedings between Husqvarna AB (Husqvarna) and Lidl Digital International GmbH & Co. KG(Lidl), concerning an action for infringement of this three-dimensional EU trademark under the number 456244 brought by Husqvarna against Lidl:

Husqvarna manufactures appliances and tools for gardening and landscaping.It is the proprietor of this EU trademark, registered in 2000 for the goods ‘sprinklers for irrigation’.From July 2014 until January 2015, Lidl offered for sale a spiral hose set.

Taking the view that the product marketed by Lidl constituted an infringement of its trademark, Husqvarna brought an action for infringement against Lidl for, inter alia, ending the infringement and obtaining damages.

In its counterclaim, Lidl requested the revocation of Husqvarna’s EU trademark at issue in the main proceedings, alleging non-use of that mark.

Legal context

Article 51(1) of Council Regulation No. 207/2009 on the European Union trade mark (Regulation No 2007/2009), which was previously in force and is applicable in the present case, provides the possible grounds for revocation of the EUTM, including the failure to genuine use the trade mark within a continuous period of 5 years, on which Lidl based its counterclaim.

It was apparent from the case that Husqvarna have not used the trademark in question since May 2012, the revocation counterclaim was filed in September 2015, and the last oral hearing at court was in October 2017.

The counterclaim is successful if the mark was not used five years before the relevant point in time.The question was – when is that relevant point in time: when the counterclaim is raised, or can it be later, on the day of the last hearing?

According to the German court, that question is a procedural matter and that, in the absence of any clarification in Regulation No 207/2009, it falls within the scope of national law.Art. 25(2) of the German Trademark Act provides clearly that, if the five-year period of continuous non-use ends during the infringement proceedings but before the last hearing on facts, a non-use defense will still be successful. That means, according to German law, the revocation counterclaim could be successful if the last use was in 2012 and the last oral hearing was in 2017.

German courts decisions

The Regional Court, Düsseldorf upheld Husqvarna’s claims and dismissed Lidl’s counterclaim.

Lidl brought an appeal against the judgment before the Higher Regional Court, which, following the last hearing held before it on 24 October 2017, set aside that judgment and declared that Husqvarna’s rights in the mark at issue in the main proceedings were revoked as from 31 May 2017 due to non-use.In that respect, theHigher Regional Courtconsidered that the relevant date, for calculating the continuous period of non-use, was not the date on which Lidl had filed its counterclaim, namely in September 2015, but that of the last hearing before that court, which had taken place on 24 October 2017.That court found that the goods protected by the mark at issue had no longer been marketed as from May 2012 and therefore concluded that, at the date on which the counterclaim for revocation had been filed, the continuous period of five years had not yet expired, whereas that period had expired as at the date of the last hearing.

Husqvarna brought an appeal on the point of law before the referring court, the Federal Court of Justice.

The decision of the CJEU

In its judgment, the CJEU first emphasized that the applicable law is primarily EU law, i.e., Regulation No 207/2009. National law shall apply to trademark matters not covered by this Regulation.

According to the CJEU’s interpretation, it follows from the provisions of Regulation No 207/2009 that the date with regard to which it must be determined whether the continuous period of five years has ended is the date on which the application or counterclaim in question was filed.

This interpretation was based on that pursuant to the first sentence of Article 55(1) of Regulation No 207/2009, the EU trade mark is to be deemed not to have had, as from the date of the application for revocation or of the counterclaim, the effects specified in Regulation No 207/2009, to the extent that the rights of the proprietor have been revoked; the second sentence of that provision states that earlier date, on which one of the grounds for revocation occurred, may be fixed in the decision at the request of one of the parties.

The CJEU declared that an interpretation of that regulation according to which, in the event of a counterclaim for revocation, the continuous five-year period of non-use must be assessed with regard to the date of the last hearing would be inconsistent with the consequences of revocation provided for in that regulation. Exceptionally, the consequences of the revocation may be fixed at a date earlier than that of the counterclaim, however, it does not provide for such a possibility in respect of a date later than that on which that counterclaim was filed.

The CJEU noted that the merits of a counterclaim for revocation alleging a five-year period of non-use of an EU mark cannot be dependent on the length of the national proceedings.The unitary character of the EU mark could thus be called into question if the scope of the protection of the mark that its proprietor enjoys under EU law could vary, in the context of counterclaims for revocation, according to the procedural rules of the Member States where those counterclaims are filed.

Conclusion

For the above reasons, the CJEU held that the five-year-period of non-use leading to the revocation of the EU trade mark under the Regulation 207/2009/EK shall be calculated from the date on which the counterclaim (or application) in question was filed.

This interpretation is also along with the case law of the Hungarian Intellectual Property Office (HIPO), according to which the use of a trademark registered more than 5 years ago shall be examined from the date on which the claim was filed. In Hungary, it is not the court but the HIPOdecides on the revocation of trademark protection.

In our point of view, it is a reasonable decision for the CJEU to fix the five-year period leading to the revocation of a trademark at a certain and unchangeable date, instead of the last hearing, because it can always be uncertain, strongly influenced by the parties and different from one Member State to another. However, it is a fact that this decision contributes to maintaining the protection of trademarks that have not been used for several years.