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 website. The 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.
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