The matter at hand

On 5 December 2005, AR applied for the French national semi-figurative registered trade mark SAINT GERMAIN for inter alia alcoholic beverages. On 8 June 2012, having learnt that Cooper International Spirits was distributing under the name ‘St-Germain’ a liqueur manufactured by St Dalfour and Établissements Gabriel Boudier, AR brought proceedings against those three companies before the tribunal de grande instance de Paris (Regional Court, Paris, France) for trade mark infringement.

In parallel proceedings, by judgment of 28 February 2013, the tribunal de grande instance de Nanterre (Regional Court, Nanterre, France) revoked AR’s trade mark SAINT GERMAIN with effect from 13 May 2011. That judgment was upheld by judgment of the cour d’appel de Versailles (Court of Appeal, Versailles, France), which has become irrevocable.

Before the tribunal de grande instance de Paris (Regional Court, Paris) AR maintained his claims alleging infringement for the period prior to the revocation which was not time-barred, that is to say, from 8 June 2009 to 13 May 2011. These claims were dismissed in their entirety by the tribunal de grande instance de Paris, on the ground that is was not sufficiently demonstrated that the trade mark had been used since it had been filed. That judgment was upheld by judgment of the cour d’appel de Paris (Court of Appeal, Paris, France) concluding that AR could not successfully argue that the trade mark’s function as a guarantee of origin had been adversely affected, or that the monopoly on use conferred by his mark had been adversely affected, or indeed that its investment function had been adversely affected, since the use of a sign identical with the trade mark by a competitor is not such, failing any use of that mark, as to impede its use substantially.

The Cour de cassation asks, in essence, whether Article 5(1)(b), the first subparagraph of Article 10(1) and the first subparagraph of Article 12(1) 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to trade marks must be interpreted as meaning that the proprietor of a trade mark whose rights in that mark have been revoked on expiry of the five-year period from its registration because he or she failed to make genuine use of the mark in the Member State concerned in connection with the goods or services for which it was registered, retains the right to claim compensation for the injury sustained as a result of the use by a third party, before the date on which the revocation took effect, of a similar sign in connection with identical or similar goods or services that is liable to be confused with his or her trade mark.

The judgment of the ECJ

The ECJ helds that as Article 9(1), Article 15(1) and Article 51(1)(a) of Regulation No 207/2009 correspond, in essence, to Article 5(1), the first subparagraph of Article 10(1) and the first subparagraph of Article 12(1) of Directive 2008/95, that case-law is entirely applicable by analogy to the interpretation of the latter provisions and recalls its decision in  Länsförsäkringar (C‑654/15) that “in determining, under Article 9(1)(b) of Regulation No 207/2009, whether the goods or services of the alleged infringer are identical or similar to the goods or services covered by the EU trade mark at issue, the extent of the exclusive right conferred by virtue of that provision should be assessed, during the five-year period following registration of the EU trade mark, by having regard to the goods and services as covered by the mark’s registration, and not in relation to the use that the proprietor has been able to make of the mark during that period” (paragraph 27).   

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 left the national legislature free to determine the date on which revocation of a trade mark takes effect as well as to decide whether they wish to provide that, where a counter-claim for revocation is made, a trade mark may not be successfully invoked in infringement proceedings if it is established as a result of a plea that the trade mark could be revoked pursuant to Article 12(1) of that directive,

The ECJ establishes that the French legislature chose to have the revocation of a trade mark for non-use take effect on expiry of a five-year period following registration of the mark and that the French legislature had not made use of the option provided for in Article 11(3) 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 to provide that, where a counter-claim for revocation is made, a trade mark may not be successfully invoked in infringement proceedings (paragraph 44).

It follows that French legislation maintains the possibility, for the proprietor of the trade mark concerned, of relying, after expiry of the grace period, on infringements of the exclusive rights conferred by that mark which occurred within that period, even if the proprietor has had his or her rights in the mark revoked (paragraph 45).

With reference to Article 13(1) of Enforcement DirectiveDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights 2004/48, the ECJ holds that “although the fact that a trade mark has not been used does not, in itself, preclude compensation in respect of acts of infringement that have been committed, that remains an important factor to be taken into account in determining the existence and, as the case may be, the extent of the injury sustained by the proprietor and, accordingly, the amount of damages that he or she might claim” (paragraph 47).

The ECJ concludes that “Article 5(1)(b), the first subparagraph of Article 10(1) and the first subparagraph of Article 12(1) 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, read in conjunction with recital 6 thereof, must be interpreted as leaving Member States the option of allowing the proprietor of a trade mark whose rights in that mark have been revoked on expiry of the five-year period from its registration because he or she failed to make genuine use of the mark in the Member State concerned in connection with the goods or services for which it was registered to retain the right to claim compensation for the injury sustained as a result of the use by a third party, before the date on which the revocation took effect” (paragraph 48).