The matter at hand

Heitec is the proprietor of a EU word mark HEITEC. Heitech Promotion is the proprietor of a younger German and EU figurative mark including the word element HEITECH. Heitec became aware of the use of the younger trade mark on 29 November 2004. Heitec sent a warning letter on 22 April 2009, to which Heitech Promotion replied on 6 May 2009 and proposed a coexistence agreement. On 31 December 2012 Heitec filed an application before a German court. Due to several procedural issues on Heitec’s part, the notice of these proceedings was served on 23 May 2014. By this action, Heitec also claimed ancillary claims for information and damages.

In appeal, the Bundesgerichtshof (Federal Court of Justice, Germany) referred four questions to the ECJ regarding the scope of acquiescence as set out in Article 9 of 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 and Article 54(1) and (2) and Article 111(2) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark. In essence, it asked if the sending of a warning letter is sufficient to interrupt the acquiescence period of five years (questions 1 and 2) and if the bringing of the action before the court, or the receipt of the action by the defendant is decisive for calculating the five-year acquiescence period (question 3). Finally, it asked if the time-lapse of the acquiescence period also encompasses ancillary claims under trade mark law (question 4).

The judgment of the ECJ

The ECJ emphasizes, with reference to recital 12 of 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, that the rule on limitation in consequence of acquiescence is intended to “safeguard legal certainty” (paragraph 48). The right to seek a declaration of invalidity or opposing to the use of a later mark applied for in good faith is, therefore, time-barred if the proprietor of an earlier mark fails “to carry out an act that clearly expressed its wish to oppose that use and to remedy the alleged infringement of its rights” (paragraph 50).

Upon applying this criterion, the ECJ discusses four scenarios: First, it reiterates its finding in case C‑482/09 (Budějovický Budvar), that “in any event, the bringing of an administrative or court action before the expiry of that period ends acquiescence and consequently prevents limitation” (paragraph 52). Second, the ECJ considers that a warning letter may interrupt the period of limitation in consequence of acquiescence, “provided that, following the unsatisfactory response to that warning letter, the proprietor of the earlier mark continues to express its opposition to the use of the later mark and takes the measures available to it to enforce its rights” (paragraph 54). Third, if the proprietor of an earlier mark does not, under such circumstances “pursue its efforts within a reasonable period in order to remedy that situation, where appropriate by bringing an administrative or court action, it must be inferred that that proprietor failed to take the measures available to it to put an end to the alleged infringement of its rights” (paragraph 54). The ECJ concludes that merely sending a warning letter every five years, is insufficient to interrupt the limitation period (paragraph 56).

With regard to the third question, the ECJ repeats that “the bringing of an administrative or court action before the expiry of that period ends acquiescence and consequently prevents limitation” (paragraph 59) and, further, notes that “the lodging of the application initiating proceedings normally reflects the genuine and unambiguous wish of the applicant to assert its rights” (paragraph62). However, the ECJ continues that if the applicant fails to meet the formal requirements of national law for service on the defendant, and these failings are not rectified in good time according to these national laws, the action does not interrupt the statute of limitations (paragraph 63).

The ECJ, finally, concludes that the expiry of the period of limitation also has effect on ancillary or related claims, such as claims for damages, the provision of information and the destruction of goods. The ECJ considers that if these actions would still be allowed, this “would undermine the objective pursued by the regime of limitation in consequence of acquiescence, which is to give the proprietor of the later trade mark the certainty, at the end of that period, that the use of that mark can no longer be challenged, by whatever legal means, by the person that has knowingly acquiesced in its use for an uninterrupted period of five years.” (paragraph 72).