On 26 March, prior to the changes made to its operational arrangements due to the COVID-19 crisis, the Court of Justice of the European Union issued an interesting judgment (in case C-622/18) with regard to claiming compensation for damages in respect of infringement of a trademark when the trademark has been revoked on grounds of non-use.

The judgment was in response to a request for a preliminary ruling made by the French Court of Cassation in relation to an action for infringement of the French trademark SAINT GERMAIN covering alcoholic beverages, brought by the owner of the mark against companies that were producing and distributing a liqueur under the name “St-Germain”. In parallel proceedings, the mark had been revoked on grounds of non-use, but the complainant maintained its damages claim for the earlier period not covered by the revocation.

 

licor st germain

 

Under French law, the effects of the declaration of revocation are regulated in the following terms: “the rights of a trademark proprietor who, without proper reason, has not made genuine use of those rights in respect of the goods and services referred to in the registration during an uninterrupted period of five years, shall be revoked. Revocation shall take effect on the date of expiry of the five-year period laid down in the first paragraph of this article. It shall have absolute effect”.

The question therefore arises as to whether the owner of a trademark who has never used it and whose rights in the same have been revoked on expiry of the legally established five-year period, may claim that the essential function of his or her trademark has been affected and, consequently, seek compensation for damage sustained as a result of the use by a third party of an identical or similar sign during the five-year period following registration of the mark.

In its ruling, the CJEU points out that the Harmonisation Directive states that the Member States should remain free to determine the effects of revocation. Consequently, a national law which establishes the dies a quo from the date of expiry of the five-year period without use, is not contrary to EU law. If this is the case, there is nothing to prevent the filing of an action for infringement of trademark rights with the corresponding claim for damages, if permitted under national legislation. However, one significant detail should be noted in this regard.

With regard to the award of damages, the Court points out that Directive 2004/48 stipulates that the compensation must be “appropriate to the actual prejudice suffered by [the proprietor of the trademark] as a result of the infringement”. Although the fact that a trademark has not been used does not, in itself, preclude compensation for acts constituting trademark infringement, it remains an important factor to be taken into account in determining the existence and, as the case may be, the extent of the damage sustained by the owner and, therefore, the amount of damages that the owner may claim.

As for the consequences of this judgment in Spain, it should be noted that the effects of the revocation of trademarks are regulated as follows under Article 60 of the Spanish Trademark Act: “A registered trademark shall be deemed not to have had, as from the date of the application for revocation or the counterclaim, the effects specified in this Act, to the extent that the owner’s rights have been revoked. An earlier date, on which one of the grounds for revocation occurred, may be set in the decision on the application or claim for revocation at the request of one of the parties”. This provision of Spanish law essentially reproduces the provisions of Article 62 of Regulation (EU) 2017/1001, and therefore the situation for European Union trademarks is the same.

Therefore, if requested by the party seeking revocation, in Spain it is also possible for the declaration of revocation to be made effective retroactively from the date of expiry of the five-year period of non-use of the mark. Nevertheless, the owner of the mark could claim compensation for damage sustained if the infringement of his or her trademark occurred in a period not covered by the effects of the revocation. However, it remains to be seen what amount of compensation will be determined by the Spanish courts in such cases.

 

Author: Carlos Morán

Visit our website