The matter at hand

Maxxus is a company trading, among other things, in sports equipment and holds both the German trade mark and the Union trade mark ‘MAXUSS’. Globus is the proprietor of the word mark and figurative mark MAXUS.

On 28 November 2019, Maxxus brought before the Landgericht Saarbrücken (Regional Court, Saarbrücken, Germany), which is the referring court, an action seeking, in essence, a declaration revoking Globus’s trade marks on the ground of non-use.

In support of its application, Maxxus submitted that over the past five years Globus did not make use of those trade marks that is such as to preserve its rights over them. Maxxus stated that it has searched online, including on Globus’s website, and that those searches have provided no indication of such use. Globus disputed those contentions and maintained that it has made use of the two trade marks at issue that is such as to preserve its rights over them.

The referring court pointed out that, in the context of proceedings for revocation of a trade mark for non-use, under the case-law of the Bundesgerichtshof (Federal Court of Justice, Germany) a distinction is to be drawn between the burden of setting out the facts and the burden of proof.

The referring court observed that, following the judgment of Ferrari (C‑720/18 and C‑721/18), in which the ECJ ruled that the burden of proof that a trade mark has been put to ‘genuine use’, within the meaning of Article 12(1) of the Trade Mark Directive 2008/95Directive 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, rests on the proprietor of that mark, the above mentioned case-law of the Bundesgerichtshof (Federal Court of Justice) relating to the burden of proof is no longer tenable. It considers, however, that the question whether national law may continue to place the burden of setting out the facts on the applicant remains unresolved. In its view, that question must be answered in the affirmative.

Given that Trade Mark Directive 2015/2436Directive [EU] 2015/2436 on the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks does not govern the national procedure relating to an application for revocation of a trade mark for non-use, the referring court has taken the view that the judgment Ferrari (C‑720/18 and C‑721/18), does not preclude the applicant from bearing a burden of setting out the facts as contemplated by that court.

It was in those circumstances that the Landgericht Saarbrücken (Regional Court, Saarbrücken) decided to stay the proceedings and to refer the following question to the ECJ for a preliminary ruling: must “[…] Article 12 of Directive 2008/95/EC and Articles 16,17 and 19 of Directive 2015/2436 respectively be interpreted as meaning that the effet utile of those provisions prohibits an interpretation of national procedural law which (a) imposes on the applicant in civil proceedings for cancellation of a national trade mark on grounds of revocation for non-use a burden of setting out the facts, as distinguished form the burden of proof and (b) requires the applicant, in the context of that burden of setting out the facts, to make substantiated submissions regarding the defendant’s non-use of the trade mark, to the extent that it is possible for the applicant to do so and to carry out its own research into the market, in a manner which is appropriate to the request for cancellation and to specific nature of the trade mark concerned?” (paragraph 23).

The judgment of the ECJ

The ECJ rules first that the question referred to should be answered solely in the light of Article 19 Trade Mark Directive 2015/2436Directive [EU] 2015/2436 on the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks. Furthermore, the ECJ state that in the light of this clarification, the referring court should be considered to be asking by its question, in essence, whether Article 19 of Directive 2015/2436 must be interpreted as precluding a procedural rule of a Member State which, in proceedings concerning an application for revocation of a trade mark for non-use, requires the applicant to carry out market research concerning the possible use of that mark by its proprietor and to make in that regard, to the extent possible, substantiated submissions in support of its application.

As previously ruled in the Ferrari (C‑720/18 and C‑721/18) judgment, the ECJ recalls that the proprietor of the disputed trade mark is best placed to prove that its trade mark has been put to genuine use. It follows from that judgment that Article 19 of the Trade Mark Directive 2015/2436Directive [EU] 2015/2436 on the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks must be interpreted to mean that the burden of proving that a trade mark has been 'put to genuine use' within the meaning of that provision rests on the proprietor of that trade mark (paragraph 36).

The ECJ further notes that it is true that the fact that the applicant, in a given procedure, does not have to bear the burden of proof, does not necessarily release that party from the obligation to provide, in its application, a full statement of the facts upon which it bases its claims (paragraph 37).

Furthermore, it is clear from Article 19 of the Directive 2015/2436 that an application for revocation of a trade mark on the basis of that provision is founded on the claim that the mark has not been put to genuine use by its proprietor. Such a claim, by its nature, does not lend itself to a more detailed statement (paragraph 38).

The ECJ rules that “In that regard, it must be stated that the national procedural rule contemplated by the referring court goes beyond a mere obligation on the applicant to set out the facts upon which its application is founded. That rule requires the applicant to state and, in the event of challenge, to prove that, before its application was lodged, it carried out market research and that it was unable to establish that the trade mark at issue was put to genuine use.” (paragraph 39).

The conclusion of the ECJ is that such a rule thus places the burden of proof of use, or non-use, of the trade mark at issue at least partially on the applicant, although, according to the Ferrari case-law that burden rests exclusively on the proprietor of that mark (paragraph 40).

In that regard, the ECJ highlights that the risk, mentioned by the referring court, of a proliferation of applications for revocation on the ground of non-use that constitute an abuse cannot result in a different interpretation. The ECJ notes that there are several procedural means that can discourage abuse of procedural law, such as paying a fee when filing an appeal (paragraph 41 through 43).

The ECJ therefore answers the referring question by stating that Article 19 of Trade Mark Directive 2015/2436Directive [EU] 2015/2436 on the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks “must be interpreted as precluding a procedural rule of a Member State which, in proceedings concerning an application for revocation of a trade mark for non-use, requires the applicant to carry out market research concerning the possible use of that mark by its proprietor and to make in that regard, to the extent possible, substantiated submissions in support of its application.” (paragraph 46).