The background was the preliminary reference of the German Federal Court of Justice on the interpretation of the revocation provisions of (new) Article 58 (1) a) EUTMR (EU Trademark Regulation No. 2017/1001).
The Federal Court of Justice has now implemented the Court’s requirements in its judgment “Bewässerungsspritze II” (= Irrigation sprayer II; judgment of 22.07.2021, ref. I ZR 212/17).
Background: Husqvarna, a manufacturer of gardening and landscaping equipment, is the proprietor of a three-dimensional EU trademark (no. 000456244) registered on 26 January 2000 for “irrigation sprayers”. Lidl, owner of a chain of retail shops, offered a spiral hose set between July 2014 and 2015 that consisted of, inter alia, highly similar sprayers for garden hoses. Against this background, Husqvarna filed a lawsuit against Lidl at the Düsseldorf Regional Court in 2015 for, among other things, injunctive relief and damages. In September 2015, Lidl counterclaimed for revocation of Husqvarna’s EU trademark for non-use. The products protected by the trademark had not been sold since May 2012.
The question was whether the relevant date for calculating the continuous period of non-use was the date of filing the counterclaim in September 2015 or the date of the conclusion of the last oral proceedings on 24 October 2017. The goods protected by the trademark had ceased to be marketed as of May 2012.
In the “Bewässerungsspritze II” judgment, the Federal Court of Justice now applied the case law of the Court of Justice to the facts of the case. According to this case law, in order to determine whether the uninterrupted period of non-use of five years referred to in Article 58 (1) a) EUTMR has expired, the point in time at which the counterclaim for revocation was filed is relevant.
Since the requirements for revocation had not yet been met at the time the counterclaim was filed, the Federal Court of Justice dismissed the counterclaim for cancellation of the trademark.
