The matter at hand
Nikolajeva is the owner of an EU trade mark for the word mark HolzProf. The application for registration of that EU trade mark was filed on 24 April 2010 and then published on 31 May 2010. The registration of the EU trade mark was published on 16 September 2010. Between 3 May 2010 and 28 October 2011, the company Multi Protect used the EU trade mark as a hidden keyword. Consequently, Nikolajeva brought an action against Multi Protect before the referring court claiming inter alia a declaration that an infringement had occurred and compensation for the 17 months that the infringement had lasted. Nikolajeva, however, had not requested the referring court to order Multi Protect to cease the infringement.
The referring court decided to stay the proceedings to seek clarification from the ECJ regarding the following three questions:
I. whether Article 102(1) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark must be interpreted as requiring an EU trade mark court to issue an order prohibiting a third party from proceeding with acts of infringement even though the owner of the trade mark has not applied for such an order before that court;
II. whether Article 9(3) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark must be interpreted as precluding the owner of an EU trade mark from being able to claim compensation in respect of acts of third parties occurring before publication of the trade mark application; and
III. whether, in the case of acts of third parties occurring after publication of the trade mark application, but before publication of its registration, the concept of ‘reasonable compensation’ in Article 9(3) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark means damages intended to compensate for all the harm suffered by that owner, including non-material harm.
The judgment of the ECJ
The ECJ holds that from the application of rules of national procedural law (namely the principle that the subject matter of proceedings is determined by the parties and of the principle of ne ultra petita), it follows that an EU trade mark court is allowed to refrain from issuing an order which prohibits a third party from proceeding with acts of infringement (as referred to in Article 102(1) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark) on the ground that the trade mark owner has not applied for such an order before that court (paragraphs 29 - 31 and 34).
Furthermore, the ECJ considers that Article 9(3) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark precludes the owner of an EU trade mark from being able to claim compensation in respect of acts of third parties occurring before the date of publication of the trade mark application (i.e. the date from which the trade mark application is deemed to be known to third parties) (paragraph 38, 39 and 59).
Regarding infringing acts of third parties committed in the period between the publication of the trade mark application and the publication of its registration, the ECJ considers that the concept of ‘reasonable compensation’ “refers to recovery of the profits actually derived by third parties from use of the mark during that period” and “rules out compensation for the wider harm which the proprietor of the mark may have suffered, including, as the case may be, moral prejudice” (paragraph 59).
The ECJ explains that in light of the conditional nature of the rights following from a trade mark application, the ‘reasonable compensation’ must have a narrower scope than the damages which may be claimed by the proprietor of an EU trade mark for acts of infringement occurring after publication of the registration (paragraph 56).
The ECJ considers recovery of profits an appropriate redress in this regard, because this “falls within the scope of the objective pursued by Article 9(3) of [Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark], which consists in preventing third parties from improperly benefiting from the intrinsic economic value constituted by the application for registration of a trade mark, when they are deemed to have had knowledge of that application as a result of its publication” (paragraph 58).