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Does the owner of a revoked trademark…

Vanessa Bouchara

Updated on April 7, 2021

Can the owner of a revoked trademark sue for infringement?

By a decision of September 26, 2018 (Cass. Com. Sept. 26, 2018 n°16-28281), the Cour de cassation referred the following question to th European Court of Justice (ECJ) for a preliminary ruling :

Is the owner of a trademark, who has never used it and who has been deprived of his rights for lack of serious use at the end of the 5-year period, admissible to sue for infringement ?

The context of the reference for a preliminary ruling

The French trademark Saint Germain was registered by Mr. Laurent Boub on December 5, 2005 to designate, among other things, alcoholic drinks.

On June 8, 2012, the applicant sued manufacturers and distributors of a St-Germain elderberry liqueur before the Paris TGI for trademark infringement.

In another proceeding, the TGI of Nanterre declared the Saint Germain trademark revoked as of May 13, 2011 for alcoholic beverages.

This decision was confirmed by the CA of Versailles on February 11, 2014.

Under these conditions, the ‘Tribunal de Grande Instance de Paris’ dismissed the infringement claim on the grounds that the trademark had not been used since its registration. The ‘Cour d’appel de Paris’ upheld this judgment on September 13, 2016 (CA Paris, September 13, 2016, n°15/04749).

Mr. Laurent Boub filed an appeal against this decision and wondered whether the holder of a brand who had not used it and had been deprived of his rights for lack of serious use could bring an infringement action against a third party in order to obtain compensation for facts prior to the effective date of the forfeiture.

A question was then referred to the CJEU for a preliminary ruling as French law must be interpreted in light of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (now repealed and replaced by Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015).

Revocation of the trademark

The essential function of the trademark is to guarantee to the consumer or end user the identity of origin of the goods and services designated by the brand(CJEU, 18 June 2002 aff. C-299/99 Philips, point 30, CJEU 12 Nov. 2002 aff. C-206/01 Arsenal Football Club C-206/01 point 48).

A brand that is not exploited cannot fulfill this natural and obvious function.

If the revocationaction is successful, it takes effect from the expiration of the five-year period following the last act of exploitation or from the filing if the mark has never been exploited (Cass. com. Jan. 31, 2006, n° 04-12.945 PIBD 2006. 828. III. 287).

As long as the revocation is not pronounced, the trademark remains in force and can therefore theoretically serve as a basis for an infringement action (Cass. com. 7 March 1978, n° 76-13192, Ann. propr. ind. 1979. 327).

The nature of this 5-year period from the publication of the trademark registration

French case law has already recognized the possibility for trademark owners to bring infringement actions for acts prior to the date on which the revocation takes effect (CA Paris, June 5, 1998, RG n° 94/28160, PIBD 1998. III. 465; CA Paris, June 16, 2000, RG n° 98/21031, 2000. 708. III. 552).

In an important decision in Länsförsäkringar, the CJEU stated that during the five-year period following the registration of a European Union trademark, its owner may, where there is a likelihood of confusion, prohibit third parties from using, in the course of trade, a sign identical or similar to its brand for all goods and services identical or similar to those for which this mark has been registered, without having to demonstrate genuine use of the said mark for those products or services (CJEU, Dec. 21, 2016, Case C-654/15).

For the CJEU, this is a grace period conferred on the owner to initiate serious use of his mark (CJEU, 21 Dec. 2016, Case C-654/15, supra, para 26).

Thus, for the judges of the European Union, the non-exploitation of the trademark constitutes an abnormal situation, the general rule being the serious use even during the first 5 years. The interest of the grace period is then to allow the owner to catch up on his passivity following the filing of his trademark. This hypothesis is comparable to that of trademark renewal: here again, a certain delay is tolerated to allow the owner to correct his omission, but this does not change the fact that, in principle, the renewal of a trademark must be carried out before its expiration.

The question asked

The fundamental difference between the Länsförsäkringar judgment cited and the question recently referred by the Cour de cassation for a preliminary ruling is whether the same grace period applies in the case where the owner of the rights forfeited wants to have acts of infringement prior to the pronouncement of the forfeiture established and obtain compensation.

The CJEU will therefore have to assess whether, notwithstanding the proven validity of the trademarks during this grace period, their owner loses any right to bring an infringement action if the trademark was never used and therefore did not fulfill its function of identifying origin.

It should be noted that the reference for a preliminary ruling was made to the CJEU under the former Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008.

On the other hand, it should not be forgotten that Directive (EU) 2015/2436 of the European Parliament and the Council of 16 December 2015 repeals Directive 2008/95/EC with effect from 15 January 2019.

Indeed, the “Trademark Package” gives a more important place to the exploitation of the trademark. The new directive states in its preamble that it is essential to require that trademarks are actually used for the goods or services for which they were registered and if they are not used for that purpose within five years from the date on which the registration procedure ends, they may be the subject of an action for damages. disqualification (Directive (EU) 2015/2436 of 16 December 2015, recital 31).

Member States are also required to establish a fast and efficient administrative procedure for declaring a trademark revoked or invalid.

The CJEU finally ruled on March 26, 2020 (CJEU, March 26, 2020, Case C-622/18, paragraph 45) and held that a holder of a mark revoked for lack of genuine use retains the right to claim compensation for acts of infringement that occurred prior to the effective date of the forfeiture of its brand.

The CJEU has also clarified that the damages awarded to the revoked trademark owner must be ” appropriate to the damage that the trademark owner has actually suffered ” (CJEU, March 26, 2020, Case C-622/18, paragraph 46).

Therefore, the absence of genuine use of a trademark does not prevent the owner of the revoked trademark from obtaining compensation. However, this circumstance must be taken into account in determining the existence of the extent of the damage and the amount of damages that the trademark owner can claim.

Following the answer given by the CJEU In a decision handed down by the French Supreme Court, the Cour de cassation overturned in its entirety the decision rendered by the Court of Appeal, which had ruled that the owner of a revoked trademark could not bring an action for infringement as long as he did not demonstrate proof of use of the earlier trademark (Cass.Com. November 4, 2020 n°16-28.281).

Thus, the owner of a revoked trademark, for failure to use it after the expiration of the 5-year period, may sue for infringement and claim damages for the use by a third party of a similar sign for identical or similar goods or services. The absence of exploitation of the trademark does not affect the right of action of the owner, but it will have an impact on the determination of the amount of the indemnity.


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