The matter at hand
Husqvarna, a manufacturer of appliances and gardening tools, is the proprietor of a three-dimensional EU mark registered for the goods ‘sprinklers for irrigation’. Lidl offered for sale a spiral hose set consisting of a spiral hose, a sprinkler nozzle and a coupling sleeve from July 2014 until January 2015.
Husqvarna initiated an infringement action against Lidl before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany) for selling a hose set conflicting with its EU mark. Lidl counterclaimed for revocation of Husqvarna’s rights in the mark at issue due to non-use. Initially, the Landgericht Düsseldorf upheld Husqvarna’s claims and dismissed Lidl’s counterclaim.
However, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany), overturned this decision after a hearing on 24 October 2017. It declared that Husqvarna's rights in the mark were revoked starting from 31 May 2017. The crucial aspect in this reversal was the determination of the relevant date for calculating the continuous period of non-use. The Oberlandesgericht Düsseldorf considered the date of the last hearing, 24 October 2017, as the pertinent date, rather than the date when Lidl filed its counterclaim in September 2015. This decision hinged on the interpretation of Article 51(1)(a) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark and Article 58(1)(a) of Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, which deal with the revocation of EU marks due to non-use.
In the appeal, the Bundesgerichtshof (Federal Court of Justice) is seeking clarification on two main points. Firstly, it questions whether the determination of the relevant date for calculating the five-year period, as mentioned in Article 51(1)(a) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark and Article 58(1)(a) of Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, is governed by these regulations. Secondly, if that is indeed the case, the court seeks guidance on the method for determining this date.
The judgment of the ECJ
The ECJ clarifies that, despite the fact that the Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark does not explicitly specify the relevant date for assessing the continuous five-year period, it can be inferred from the regulation's provisions that the crucial date is when the application or counterclaim was filed. This interpretation is in harmony with the overall framework of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark and the repercussions outlined in Article 55(1).
Moreover, the ECJ emphasises that, according to the first sentence of Article 55(1) of the Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, the EU trade mark is considered not to have had the specified effects from the date of the application for revocation or the counterclaim, to the extent that the proprietor's rights have been revoked. The ECJ underscores that interpreting the regulation to assess the continuous five-year period concerning a counterclaim for revocation with respect to the date of the last hearing would be inconsistent with the revocation consequences outlined in the regulation.
The ECJ states that this inconsistency arises because assessing the date of the last hearing would result in the revocation taking effect from the date, during the proceedings, when the conditions of Article 51(1)(a) are fulfilled, even if these conditions were not met at the time of the counterclaim filing.
Moreover, the ECJ points out that while Article 55(1) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark allows, in exceptional cases, fixing the consequences of revocation at an earlier date than that of the counterclaim, it does not provide for such a possibility for a date later than the filing date of the counterclaim.