Friday, 1 July 2016

Damages in cases of EU trademark application infringement

In the main proceedings from which the questions referred to the CJEU stem (judgment of 22 June 2016, C-280/15), the plaintiff –the holder of an EU trademark- filed a complaint for unlawful use of her trademark as a “hidden keyword” on an Internet websiteThe use in question had allegedly commenced prior to the publication of the plaintiff’s trademark application and had continued after publication of the registration of the mark.   

The plaintiff sought three orders, namely: (i) a declaration of infringement of her trademark; (ii) compensation for the advantage improperly obtained by means of the infringement, calculated by multiplying the duration of the infringement by the fee established in the licensing agreement; and (iii) compensation for the moral damages suffered on account of the infringement.

The relief sought by the plaintiff gave rise to some uncertainty, and so the court decided to refer the following three questions to the CJEU:


  • First of all, the referring court asked whether Art. 102.1 EUTMR must be interpreted as meaning that an EU Trademark Court must issue an order which prohibits a third party from proceeding with acts of trademark infringement even though the trademark holder did not apply to the court for such an order.       

   
In reply to that question, the CJEU stated that Art. 102.1 EUTMR does not preclude an EU Trademark Court from refraining, pursuant to certain principles of national procedural law, from issuing an order which prohibits a third party from proceeding with acts of infringement on the grounds that the trademark holder concerned has not applied for such an order before that court.


  • The referring court’s second and third questions concern the second sentence of Art. 9.3 EUTMR on compensations and specifically question the following two aspects: 
(i) Whether the holder of an EU trademark may claim compensation in respect of acts of third parties occurring before publication of the application for registration of the trademark concerned; and 
(ii)Whether, in the case of acts occurring after publication of the application for registration of that mark, but before publication of the registration, the concept of “reasonable compensation” in that provision means damages intended to compensate for all the harm suffered by that holder, i.e., recovery of the usual value derived by the third party from use of the mark and compensation for the moral damages suffered. 
The answer to the first question is clear: the second sentence of Art. 9.3 EUTMR establishes a strictly circumscribed exception to the rule that an EU trademark cannot prevail against third parties prior to the publication of its registration (Art. 9.3, first sentence). Therefore, no compensation can be demanded for acts that take place prior to the publication of the application for registration of the trademark.  

In order to reply to the second question, the CJEU makes an interpretation of the concept of “reasonable compensation”, based on the following points:


  • The rights conferred by an application for registration of an EU trademark are conditional in nature, since at that point there is no certainty that the mark applied for will be granted.                                                       
  • It thus follows that the reasonable compensation that may be claimed in an action based on a trademark application must be smaller in scope than the damages that may be claimed by the holder of a registered trademark. 
  • Furthermore, a distinction is drawn in Art. 96 EUTMR between the actions in each case, i.e., (a) refers to any infringement action, whilst (b) refers to any action brought as a result of acts referred to in Art. 9.3, second sentence, EUTMR.  
  • Also, Art. 13 of Directive 2004/48 establishes rules on the subject of damages which, on the one hand, provide for full compensation for the harm suffered, which may include moral damages, in the event of acts of infringement committed knowingly and, on the other, recovery of profits or the payment of damages which may be pre-established where the acts of infringement have not been committed knowingly. 
All this confirms that the “reasonable compensation” provided under Art. 9.3, second sentence, EUTMR must be smaller in scope than the damages that can be claimed by the holder of an EU trademark for acts of infringement committed after the registration of the trademark, and must be limited to the recovery of profits actually derived by third-party infringers from use of the mark during that period, with moral damages being ruled out.  

In light of the above points, the CJEU replied to the referring court’s questions as follows:

1)      Article 102(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark must be interpreted as not precluding an EU trade mark court from refraining, pursuant to certain principles of national procedural law, from issuing an order which prohibits a third party from proceeding with acts of infringement on the ground that the proprietor of the trade mark concerned has not applied for such an order before that court.
2)      The second sentence of Article 9(3) of Regulation No 207/2009 must be interpreted as precluding the proprietor of an EU trade mark from being able to claim compensation in respect of acts of third parties occurring before publication of an application for registration of a trade mark.  In the case of acts of third parties committed during the period after publication of the application for registration of the mark concerned but before publication of its registration, the concept of ‘reasonable compensation’ in that provision refers to recovery of the profits actually derived by third parties from use of the mark during that period.  On the other hand, that concept of ‘reasonable compensation’ rules out compensation for the wider harm which the proprietor of the mark may have suffered, including, as the case may be, moral prejudice.

Author: Ana Sanz

Visit our website: http://www.elzaburu.es/en    

46 comments:

  1. Yes, unlawful use of the trademark is an illegal act. So I suggest business owner to buy registered trademark for your business. I also got a problem with my competitor for a trademark but I have registered my product so that I won the case.

    ReplyDelete
  2. Any celebration this is adversely laid low with a decision of the euipo forums of Make My Assignment attraction may additionally carry an action before the european widespread court docket within months of notification of the contested selection. A choice of the ecu standard court docket can be appealed to the european courtroom of justice.

    ReplyDelete
  3. You have such amazing Lay outs. Thank you very much for this excellent information.!!! I really appreciated.

    토토
    바카라사이트
    파워볼
    카지노사이트

    ReplyDelete
  4. Very good blog. with lots of useful information. I would love to read your blog. I will regularly read your blog.

    토토
    스포츠토토
    토토사이트
    먹튀검증

    ReplyDelete
  5. Amazing. You are dependably a motivation. you generally make an impact on your blog with new posts!

    스포츠토토
    온라인카지노
    파워볼사이트
    온라인바카라

    ReplyDelete
  6. If you’re just getting into online *****, trying to revise your ***** tournament strategy, or love a good underdog story, then keep reading to find out how these unknowns burned through their professional competition to cash out at some of the biggest ***** tournaments in the world.
    온라인경마

    magosucowep

    ReplyDelete
  7. 카지노사이트 Hi there, after reading this remarkable paragraph i am too happy to share my experience here with friends.

    ReplyDelete
  8. 바카라사이트 Hello friends, pleasant paragraph and nice arguments commented at this place, I am actually enjoying by these.

    ReplyDelete
  9. Hello there, You’ve done an incredible job. I will definitely digg it and personally recommend to my friends. I’m confident they’ll be benefited from this website.|
    스포츠토토

    ReplyDelete
  10. Hi there, You have done a great job. I will definitely digg it and
    personally recommend to my friends. I am confident they will be benefited from this web site.
    토토사이트

    ReplyDelete
  11. 토토 I appreciate, cause I found exactly what I was looking for. You’ve ended my 4 day long hunt! God Bless you man. Have a nice day.

    ReplyDelete
  12. Amazed to be here and want to read this amazing info. Thanks for this interesting article and i would really want to say thanks for this info. 토토

    ReplyDelete
  13. A much informative article and I really appreciate this info and willing for the more interesting article like this. 온라인카지노

    ReplyDelete
  14. A much informative article and I really appreciate this info and willing for the more interesting article like this. 파워볼게임

    ReplyDelete
  15. Can nicely write on similar topics! Welcome to here you'll find out how it should look. Valuable information. 카지노

    ReplyDelete
  16. However when it comes to promoting your business, postcards certainly don’t show their age next to their contemporaries: the text message and the email. 토토사이트

    ReplyDelete
  17. I was impressed by your writing. Your writing is impressive. I want to write like you.토토사이트 I hope you can read my post and let me know what to modify. My writing is in I would like you to visit my blog.

    ReplyDelete
  18. Nice knowledge gaining article. This post is really the best on this valuable topic 스포츠토토

    ReplyDelete
  19. my iPhone and it looks a ton different than on my computer have you noticed this or is it just my phone ? 토토사이트

    ReplyDelete
  20. I have noticed this weblog. Lastly 토토사이트 something not a junk, which we undergo incredibly frequently.

    ReplyDelete
  21. Excellent post! We will be linking to this great content on our skull rings web site. Keep up the good writing. 야한동영상

    Also feel free to visit may webpage check this link
    야설

    ReplyDelete
  22. There is certainly a lot to learn about this topic. I really like all the points you made. 일본야동

    Also feel free to visit may webpage check this link
    한국야동

    ReplyDelete
  23. Good way of explaining, and pleasant post to obtain information about my presentation focus, which i am going to present in college 한국야동닷컴

    Also feel free to visit may webpage check this link
    국산야동

    ReplyDelete
  24. I have to thank you for the efforts you’ve put in penning this blog. I’m hoping to check out the same high-grade blog posts by you later on as well. In truth, your creative writing abilities has encouraged me to get my own blog now 국산야동

    Also feel free to visit may webpage check this link
    야설

    ReplyDelete
  25. I have read your excellent post. This is a great job. I have enjoyed reading your post first time. I want to say thanks for this post. Thank you. 토토사이트

    ReplyDelete
  26. I have read your excellent post. This is a great job. I have enjoyed reading your post first time. I want to say thanks for this post. Thank you. 메이저안전사이트

    ReplyDelete
  27. I found out about this place after looking around several blogs. It s a great luck for me to know this place. 토토사이트

    ReplyDelete
  28. When I read your article on this topic, the first thought seems profound and difficult. There is also a bulletin board for discussion of articles and photos similar to this topic on my site, but I would like to visit once when I have time to discuss this topic. 메이저사이트

    ReplyDelete
  29. In my opinion, the item you posted is perfect for being selected as the best item of the year. You seem to be a genius to combine 우리카지노 and . Please think of more new items in the future!

    ReplyDelete
  30. "You are so intriguing! I figure I haven't really scrutinized anything equivalent already.
    It's uncommon to find someone who has a certified idea on this point.
    Genuinely, thank you for starting this.
    ※사설토토※사설토토사이트※토토사이트※
    오랫동안 많은 업체들과 함께 데이터 베이스를
    구축하였으며 유져님들께서 안전한 놀이터
    및 메이저 사이트에서 부담없이
    최적의 스포츠게임을 즐기실수 있게 최고의
    토토사이트를 제공해드립니다
    ※토토사이트 검증※
    추천받으실수 있습니다.
    This webpage is a necessary thing on the Internet,
    somewhat creative person!토토사이트"

    ReplyDelete
  31. Really it was an awesome article...very interesting to read. Please sharing like this information. 사설토토

    ReplyDelete
  32. Thanks for sharing this brilliant article it was a very useful and helpful article. 파워볼게임

    ReplyDelete
  33. Incredible post I should state and much obliged for the data. Instruction is unquestionably a sticky subject. Be that as it may, is still among the main themes of our opportunity. I value your post and anticipate more. 메이저저사이트

    ReplyDelete
  34. Hi there, 토토사이트 I found your blog by the use of Google while looking for a related subject,
    your site came up, it appears good. I've bookmarked it in my google bookmarks.

    ReplyDelete
  35. 스포츠중계 Аs tҺe аdmin oof this site іs աorking, no uncertainty very shօrtly іt will be well-known, due to its feature contents.

    ReplyDelete
  36. I have seen good contents.
    The content on your site is great. I am impressed. 바카라사이트

    ReplyDelete
  37. wow, its a incredible information. thanks for sharing. i think this article would be nice if you put some image to help describing the topic. Feel free to visit my website; 토토사이트

    ReplyDelete
  38. I’m truly enjoying the design and layout of your site. It’s a very easy on the eyes which makes it much more enjoyable for me to come here and visit more often. Did you hire out a designer to create your theme? Exceptional work! Feel free to visit my website; 바카라사이트

    ReplyDelete
  39. Hey nice to see you there being posting again yea? I like your post a lot seriously hook me up sometime dude. Feel free to visit my website; 배트맨토토

    ReplyDelete
  40. I finally found what I was looking for! I'm so happy. 사설토토사이트 Your article is what I've been looking for for a long time. I'm happy to find you like this. Could you visit my website if you have time? I'm sure you'll find a post of interest that you'll find interesting.

    ReplyDelete
  41. Your post is very interesting to me. Reading was so much fun. I think the reason reading is fun is because it is a post related to that I am interested in. Articles related to 메이저사이트순위 you are the best. I would like you to write a similar post about !

    ReplyDelete
  42. First of all, thank you for your post. 바카라사이트 Your posts are neatly organized with the information I want, so there are plenty of resources to reference. I bookmark this site and will find your posts frequently in the future. Thanks again ^^

    ReplyDelete
  43. I think it's a website with a lot of good contents. I think I accumulate a lot of knowledge.
    Please come to my website and give me a lot of advice.
    It's my website.

    머니상

    ReplyDelete
  44. Thank you. I realized a lot of things using this. Thank you for always writing good things.
    There are a lot of good comments on my homepage.
    Please visit. It's my website.

    온라인바둑이

    ReplyDelete
  45. I think a lot of articles related to are disappearing someday. That's why it's very hard to find, but I'm very fortunate to read your writing. When you come to my site, I have collected articles related to 크레이지슬롯 .

    ReplyDelete