In a judgment of 26.3.2020, the ECJ ruled that under French law, the proprietor of a trade mark which he does not use may claim damages from a third party for the use of a similar sign until the trade mark is declared invalid. The full decision is published e.g. in GRUR 2020, p. 635 ff.
On 5 May 2005, the applicant for the proceedings applied to the French Trade Mark Office for registration of the word and figurative mark “SAINT GERMAIN” for the following goods: alcoholic beverages (except beers), ciders, digestives, wines, spirits and alcoholic extracts or essences. The trademark was registered on 12.5.2006. The five-year grace period for use ended on 12.5.2011.
The defendant in the main proceedings had been marketing a liqueur under the name “St-Germain” for several years.
On 8 June 2012, the plaintiff brought an action against the defendant for trade mark infringement before the Tribunal de grande instance de Paris.
In parallel proceedings, the Tribunal de grande instance de Nanterre, by judgment of 28.2.2013, declared the plaintiff’s rights to the trademark “SAINT GERMAIN” to be revoked with effect from 13.5.2011. This judgment was confirmed by a final judgment of the Cour d’appel de Versailles of 11.2.2014.
The plaintiff could not prove that he had used the trademark “SAINT GERMAIN” at any time. He continued to claim damages for the use of the sign “St-Germain” by the defendant up to 13.5.2011 for the period from 8.6.2009, which was not time-barred.
The action for trade mark infringement was dismissed in the first two instances. The third instance (Cour de Cassation) referred the case to the ECJ. Under French law, the owner of a trademark is still entitled to claim infringements from the trademark after the expiration of the grace period, even if the trademark has been declared invalid.
The ECJ ruled that the Member States were entitled to provide in their respective national laws that the owner of a trademark retains the right to claim compensation for the damage caused by the use by a third party of a similar sign for goods or services identical or confusingly similar to his trademark before revocation took effect.
Accordingly, the plaintiff in the main proceedings is entitled to damages even if he did not use the trade mark himself.
Under German law, the case would have to be assessed differently. Under § 25(1) of the Markengesetz, the proprietor of a registered trade mark may not bring a claim against third parties within the meaning of Paragraphs 14 and 18 to 19c of the MarkenG if, during the five years preceding the date on which the claim is brought, the trade mark has not been used in accordance with Paragraph 26 of the MarkenG in relation to the goods or services on which the claim is based, provided that the trade mark has been registered for at least five years at that date. The claim for damages is governed by § 14 (6) of the German Trade Mark Act. § 25 (1) of the German Trade Mark Act does not provide for a limitation of the retroactive effect in terms of time and therefore also excludes infringement claims relating to a period in the past in which the trade mark had not been revoked due to non-use. In particular, therefore, claims for infringement which occurred during the grace period for use of the trademark are also excluded (see inter alia Ströbele/Hacker/Thiering, Kommentar zum MarkenG, § 25, para. 16).
On the other hand, the case law of the German courts does not rule on the case where the third party commits acts of infringement during a period in which the trademark owner has still made genuine use of the trademark and has ceased using it at a later date. The BGH has so far left this question open (see BGH GRUR 2012, 832 et seq. – ZAPPA).
