CJEU clarifies the margin left to Member States regarding remedies available for certain trademark infringements
The Court of Justice has just given its judgment in Cooper International Spirits and Others (C-622/18), in response to a request for a preliminary ruling from the French Court of Cassation (Cour de cassation) concerning the interpretation of several provisions of Directive 2008/95 on approximation of laws of the Member States relating to trade marks.
The preliminary reference was made in proceedings between AR and Cooper International Spirits LLC, St Dalfour SAS and Établissements Gabriel Boudier SA, concerning an action for trade mark infringement brought by AR, a marketer of alcohol and spirits. When examining the case, the French Court of Cassation doubted whether the proprietor of a trade mark who has never used it and whose rights to it have been revoked on expiry of the five-year period laid down in the first subparagraph of Article 10(1) of Directive 2008/95 may claim that the essential function of his or her trademark has been affected and, consequently, seek compensation for injury as a result of the alleged use by a third party of an identical or similar sign during the five-year period following registration of the mark.
By its judgment today, the Court of Justice has ruled that Article 5(1)(b), the first subparagraph of Article 10(1), and the first subparagraph of Article 12(1) of Directive 2008/95, read in conjunction with recital 6 thereof, must be interpreted in the following way:
- Regarding cases where a proprietor of a trademark whose rights in that mark have been revoked on expiry of the five-year period from its registration because he or she failed to make genuine use of the mark in the Member State concerned in connection with the goods or services for which it was registered;
- Member States have the option of allowing that proprietor to retain the right to claim compensation for the injury sustained as a result of the use by a third party, before the date on which the revocation took effect, of a similar sign in connection with identical or similar goods or services that is liable to be confused with his or her trade mark.
The judgment is available here.
An Analysis on this case will be published soon on EU Law Live. We will keep you posted!