In an action for retrospective invalidity of a national mark on which seniority is based, the conditions for invalidity of that mark must have been met on the date of its prior surrender or cancellation


Peek & Cloppenburg

Trade marks: Validity

19 Apr 2018

The matter at hand

The German company Peek and Cloppenburg KG, Düsseldorf  (‘P&C Düsseldorf’) is the trade mark proprietor of several German trade marks containing the word element ‘PuC’, having priority from 1953.

Peek and Cloppenburg KG, Hamburg (‘P&C Hamburg’) is another German company, and proprietor of the EU word mark ‘PUC’, registered in 2001, which enjoys the seniority of two older German word marks ‘PUC’, registered in 1978 and 1982.

In 2005, P&C Düsseldorf brought an action for cancellation, due to revocation, of the latter German word marks, after which P&C Hamburg had the German word marks cancelled voluntarily.

P&C Düsseldorf subsequently brought an action before the Landgericht Hamburg (Regional Court, Hamburg, Germany) for an order that P&C Hamburg may no longer claim the seniority of the cancelled marks. This Landgericht Hamburg granted the action, considering that the cancelled trade marks could have been cancelled a posteriori both on the date on which they were cancelled due to voluntary surrender and on the date of the last hearing which took place before that court. This decision was upheld in appeal by the Oberlandesgericht Hamburg (Higher Regional Court, Hamburg, Germany), after which P&C Hamburg appealed to the  Bundesgerichtshof (Federal Court of Justice, Germany).

The Bundesgerichtshof referred the case to the ECJ for a preliminary ruling, asking which of the aforementioned dates was decisive in the a posteriori establishment of invalidity and whether the use of a cancelled mark after the date of cancellation could have any relevance in this respect.

The judgment of the ECJ

The ECJ holds that although Article 14 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, governing the a posteriori action, does indeed not stipulate the date which should be used in order to examine whether the conditions for invalidity or revocation have been met, “it is nevertheless clear from the wording and purpose of that provision that the examination in question is intended to determine retrospectively whether those conditions had been met on the date on which the earlier national mark was surrendered or allowed to lapse” (paragraph 26). Accordingly, the requirement that the conditions for the invalidity or revocation must also be met on the date on which a ruling is made on the application seeking to establish a posteriori that invalidity or that revocation, is not compatible with that provision.

The ECJ furthermore considers that the use of a national mark, after it has been surrendered or lapsed, has no curative effect in the sense that it could maintain the rights attached to it, emphasizing that “the possibility of making use of a national mark which has been surrendered was in no way intended by [the Trade Mark Directive”. After all, “a cancelled mark is no longer in existence in the light of that directive” (paragraph 28). Moreover, the ECJ points out that it follows from the second subparagraph of Article 12(1) of the Trade Mark Directive that the use of the mark is taken into consideration only on the date of the filing of the application for revocation (possibly brought forward by three months in the circumstances referred to in the third subparagraph of that provision), and that it would not be consistent with that provision to take into consideration the use made after the date on which the proprietor himself declared his surrender of that mark or allowed it to lapse.

Consequently, the ECJ rules that the invalidity or revocation of an earlier national mark, the seniority of which is claimed for an EU mark, may be established a posteriori if the conditions for that invalidity or that revocation were met on the date on which that earlier national mark was surrendered or the date on which it lapsed. Legislation requiring that these conditions must have also been met on the date of the decision making this finding is not in accordance with the Trade Mark Directive.

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