In a judgment of 17 December 2020, the Court of Justice ruled on a reference for a preliminary ruling from the Federal Court of Justice, Germany, on the date of assessment of the period of 5 years for declaring revocation of an EU trade mark (C-607/19).
The background to the reference for a preliminary ruling was as follows:
Pursuant to Art. 51 (1) lit. a) of Regulation No. 207/2009 (now Art. 58 (1) lit. a) of Regulation No. 2017/1001,EUTMR), the rights of the proprietor of the EU trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; however, no person may claim that the proprietor’s rights in an EU trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed.
Pursuant to Sec. 25 (2), first sentence, Trade Mark Act, in the case of a plea of revocation in legal proceedings, the calculation of the 5-year period of use shall be based on the date of filing of the action. If, according to Sec. 25 (2) sentence 2 of the Trade Mark Act, the 5-year period of non-use ends after the filing of the action, the plaintiff has to prove, upon objection of the defendant, that the trade mark has been put to genuine use within the last five years before the conclusion of the oral proceedings.
The second sentence of Sec. 55(3) of the Trade Mark Act provides that, in respect of an action brought by the proprietor of an earlier registered mark, it is the period of five years calculated with regard to the end of the hearing which, where the defendant has raised an objection, is to be taken into account for the purposes of assessing non-use.
The dispute in the main proceedings was as follows:
Husqvarna manufactures equipment for gardening and landscaping. It is the proprietor of the following three-dimensional EU trade mark (No 000456244) registered on 26 January 2000 for ‘sprinklers for irrigation’.
Lidl offered a spiral hose set between July 2014 and 2015 that consisted of, inter alia, highly similar sprinkler nozzles.
Against this background, Husqvarna filed an infringement action against Lidl with the Düsseldorf Regional Court in 2015 seeking, among other things, injunctive relief and damages. In September 2015, Lidl filed a counterclaim for revocation of Husqvarna’s EU trade mark for non-use. The products protected by the trade mark had no longer been sold since May 2012.
The Düsseldorf Regional Court granted Husqvarna’s claims and dismissed Lidl’s counterclaim. On appeal by Lidl, the Higher Regional Court Düsseldorf set aside the judgment of the Regional Court Düsseldorf and declared Husqvarna’s EU trade mark revoked as of 31 May 2017. The Higher Regional Court Düsseldorf held that the relevant date for calculating the uninterrupted period of non-use was not the date of filing the counterclaim in September 2015, but the date of the conclusion of the last oral proceedings on 24 October 2017. The goods protected by the trade mark had no longer been marketed as of May 2012, from which it had to be concluded that the uninterrupted period of five years provided for in Article 51(1)(a) of Regulation No 207/2009 (= Article 58(1)(a) EUTMR) had not yet expired at the time the counterclaim for revocation was filed, but had expired at the time of the last oral proceedings.
Husqvarna appealed to the Federal Court of Justice, which referred the following questions to the CJEU for a preliminary ruling (abbreviated and summarized below):
In the case of a counterclaim for revocation of an EU trade mark which was filed before the expiry of the five-year period of non-use, is the determination of the date relevant for the calculation of the period of non-use covered by the provisions of the (former) Community Trade Mark Regulation as well as the EU Trade Mark Regulation?
If the answer is in the affirmative: In the case of a counterclaim for revocation of an EU trade mark which was filed before the expiry of the five-year period of non-use pursuant to Article 51(1)(a) of Regulation No 207/2009 (= Article 58(1)(a) EUTMR), is the date of the filing of the counterclaim or the date of the last hearing in the appeal instance to be taken into account in the calculation of the period of five years of non-use?
In its submission, the Federal Court of Justice took the view that the calculation of the expiry of the five-year time limit should be based on the last oral hearing before the court of appeal. It was a procedural question and, in the absence of clarification in the respective EU Trade mark regulations, it fell within the scope of national law.
The Court of Justice rejected this with reference, inter alia, to Article 55 (1) of Regulation 207/2009 (= Article 62 (1) EUTMR). An interpretation of this provision as made by the Federal Court of Justice runs counter to the effects of revocation provided for in this Regulation. According to Art. 55(1) of Regulation 207/2009, the EU trade mark shall be deemed not to have taken effect, to the extent that the trade mark is revoked, from the date on which the application for revocation was filed or the counterclaim was filed.
An assessment at the time of the last oral proceedings would result in revocation taking effect from a point in time during the proceedings when the conditions referred to in Article 51(1)(a) of Regulation No 207/2009 are fulfilled, although these conditions were not fulfilled at the time when the counterclaim was filed.
According to Art. 55 (1) sentence 2 of Regulation No. 207/2009, an 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; however, this article does not provide for such a possibility for a point in time after the filing of the counterclaim.
Furthermore, the merits of a counterclaim for revocation of an EU trade mark for non-use over a period of five years may not depend on the duration of national proceedings.
In the light of the foregoing, the Court of Justice held that Art. 51(1)(a) of Regulation No. 207/2009 trade mark must be interpreted as meaning that, in the case of a counterclaim for the revocation of rights in an EU mark, the relevant date for the purposes of determining whether the continuous five-year period referred to in that provision has ended is the date on which that counterclaim was filed.
