26 March 2020TrademarksRory O'Neill

TM owner allowed to seek compensation despite non-use, CJEU rules

EU law does not prohibit the owners of trademarks revoked for non-use from seeking compensation for infringement which took place prior to cancellation of the mark, the EU’s top court has ruled.

The  ruling, issued today, March 26, follows a dispute in France over the use of the ‘Saint-Germain’ mark for spirits.

AR, the company behind the Part des Anges spirit brand, registered ‘Saint German’ as a French trademark in 2006, covering alcoholic drinks such as spirits and wine.

In 2012, the company sued three other spirits companies, including  Cooper International Spirits, at the Paris Regional Court, for distributing liqueur under the “St-Germain” brand.

But the following year, a regional court in Nanterre, France revoked the ‘Saint-Germain’ trademark, effective from May 2011, on the grounds of non-use.

The revocation of the ‘Saint-Germain’ mark was subsequently upheld in 2014 by the Court of Appeal of Versailles.

In the Paris court proceedings, AR maintained that it was entitled to seek compensation for infringement which took place from June 2009 to May 2011. This was the period when the trademark was active, and for which the complaint would not be time-barred.

The Paris regional court, and subsequently the Paris Court of Appeals, dismissed the claims on the grounds the mark hadn’t been used since it was filed.

AR appealed once more to the Paris Court of Cassation, arguing that neither EU or French IP law requires the owner of a mark to prove that a mark “has been used in order to benefit from trademark protection”.

The Court of Cassation referred the case to the CJEU, seeking clarity on whether EU law prohibits the owner of a trademark revoked for non-use seeking compensation for infringement which took place prior to it being cancelled.

In today’s judgment, the CJEU concluded that EU trademark law leaves this up to individual member states to decide, and that it appears to be possible under French law.

Nonetheless, while EU law does not block trademark owners seeking compensation in such circumstances, the CJEU said use of the mark “remains an important factor to be taken into account” when determining whether an injury has taken place and the amount of damages that should be awarded.

The case will now return to the Paris Court of Cassation for further proceedings.

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