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In his Opinion of September 18 (not yet available in English), Advocate General G. Pitruzzella answered a question referred for a preliminary ruling by the French Court of Cassation (Cour de cassation) in two proceedings concerning the semi-figurative trade mark “Saint Germain” registered by the company AR on May 12, 2006, for alcoholic beverages.

The first of those proceedings concerned a trade mark infringement action brought before the Paris Regional Court (tribunal de grande instance) on June 8, 2012, by AR against three companies manufacturing and distributing a liquor under the name “St-Germain.”

In parallel, one of the defendants brought proceedings before the Nanterre Regional Court (tribunal de grande instance de Nanterre), which revoked the mark on the grounds that AR had not demonstrated any actual use during the five-year period following its registration.

Before the Paris Court of Appeal (cour d’appel de Paris), AR argued that its rights had been infringed during the five years prior to the revocation of the trade mark for non-use. In the court’s view the only possible infringement was by imitation, which was not applicable since there was no likelihood of confusion on the part of the public because the mark had not been used.

In this context, the Court of Cassation referred a question to the Court of Justice of the European Union (CJEU) on whether the proprietor of a trade mark which has been revoked for lack of genuine use would be entitled to oppose the use by a third party of an identical or similar sign during the period preceding the date on which revocation took effect.

The Advocate General answered in the affirmative: the proprietor of a trade mark that has been revoked can bring actions for any infringement during the 5-year period following registration. Any other interpretation would be tantamount to “regularizing ex post infringements.” According to the Advocate General, the lack of use is not sufficient reason to prevent trade mark proprietors from protecting their exclusive rights during the period prior to revocation. He refers to the Länsförsäkringar judgment, which held that during the 5-year period following registration, trade mark proprietors could exercise their exclusive rights without having to demonstrate any use. It follows from that judgment that the damage to be compensated relates to the “potential distinctive character” of a mark. Therefore, the AG considers that unless the law of the relevant Member State provides for the retroactive effect of revocation from the date of application or registration of the mark, nothing prevents the proprietor from claiming damages for any infringement while the trade mark was still in force.

The Advocate General also points out that Directive 2015/2436 (replacing Directive 2008/95, in force when the claims were filed) does not establish the effects of revocation but leaves a margin of discretion to the Member States. In that regard, the AG notes that under French law those effects apply only after five years from the publication of the mark’s registration.

The Advocate General concludes that trade mark proprietors may bring infringement actions and seek compensation for any damage suffered as a result of the use of an identical or similar sign during the period in which the relevant mark was in force, irrespective of its actual use.

By Miquel Peguera and Paula Conde

This post is also available in: Español



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