[Editor's note] Like most countries and regions in the world, The rulings of the Court of Justice of the European Union have important guiding significance and predictive value for understanding the legal norms of the European Union. Esabaril (ELZABURU) At the beginning of each year, typical cases of the Court of Justice of the European Union in the previous year are summarized and published, And a brief review of each case, In order to help customers and partners to understand the EU intellectual property norms. Given the importance of Chinese customers and partners, We try to publish the Chinese version of typical cases on a weekly basis, It is convenient for Chinese partners to learn the latest information in a timely manner. 　　

[background]

　　P&C Düsseldorf It's a German word and graphic trademark "PuC" The trademark owner of, Register for use on clothing and other goods, The earliest priority date is retroactive to 1953 years. P&C Hamburg It is a registered trademark of European Union characters "PUC" The trademark owner of, 2001 Year registration used in No 18 and 25 commodity, And register with 1978 Nian He 1982 Two German trademarks in 2000 "PUC" Claim the right of abode (seniority, Also called "Prior right" , "Eu trade mark regulation" A special system, A registered trademark that has been registered in a Member State of the European Union or an international trademark designates a registered trademark to be effective in that Member State, If the same trademark is reapplied for EU registration trademark, The specified class of goods or services is the same as or includes the trademark of the prior member State or the trademark in force in that country of the international trademark, The applicant applies for the right of abode, After the registration of the later applied EU trademark is granted, The scope of its trademark right may include the same content of the rights of the prior trademark, And retain information on the application date and priority date of the original registered trademark or effective trademark in the territory of the Member State. After the application for the right of preemption is approved, The original trademark will automatically become invalid) . 　　

P&C Düsseldorf Demand that its German trademark be based on the trademark rights acquired by use, namely P&C Hamburg After the registration of the German trademark and before the registration of the EU trademark: namely 1982 Year to year 2001 Annual period. 　　

2005 years, P&C Düsseldorf Have applied for P&C Hamburg Two German trademarks "PUC" Annulment procedure, The reason was that the trademark was not actually in commercial use. In the process of answering the lawsuit, P&C Hamburg Voluntarily applied to the German Patent and Trademark Office for the cancellation of the above two German registered trademarks "PUC" . At that time, Both sides agreed to drop the lawsuit. P&C Düsseldorf No further claim P&C Hamburg The retroactive effect of the revocation of two German trademarks, And revoke the effect of its right of abode as the prior trademark. 　　

after, P&C Hamburg It is now available in Germany "PUC" mark, P&C Düsseldorf The infringement action is brought accordingly. In the course of defense, P&C Hamburg Again, two German trademarks "PUC" Right of preemption. P&C Düsseldorf Think that, The two German precursors cited by the defendants are no longer valid, Because the defendant voluntarily applied to the Trademark Office to revoke two prior trademarks, The fact that it has never been put to real use has emerged and continues, Therefore, in the actual application for cancellation of the first two trademarks have been in the state of revocation. P&C Hamburg Argue that, The revocation of the two trademarks shall have no retroactive effect, Because in announcing the cancellation, The two trademarks (As an EU trademark with the right of abode——Translator's note) It is already being used commercially in Germany. 　　

2010 years, P&C Düsseldorf A lawsuit was filed in Hamburg District Court, Call for judgment P&C Hamburg No more two German trademarks may be quoted "PUC" Right of preemption, The reason is that the two trademarks have been P&C Hamburg Voluntary revocation, And before the actual cancellation of the cause "There are already cases that have not been put into real use" In a state that can be revoked. P&C Düsseldorf Simultaneously advocate, Because its trademark rights earlier than the above two precedents German trademarks, Therefore, At that time, it was also possible to request the cancellation of the defendant's two prior trademarks on this ground. 　　

The first trial decided in favour of the plaintiff. subsequently, P&C Hamburg An appeal was filed at the regional High Court in Hamburg. The High Court heard that, P&C Düsseldorf Have good cause of action, Because of the revoked German trademark "PUC" , That is, the EU trademark requires the right of preemption two trademarks, The date on which the obligee should voluntarily give up the right, That is 2005 From the date of the last hearing of the lawsuit in 2000, Be revoked. 　　

P&C Hamburg Judgment on appeal, Appeal again to the German Federal Court of Justice. The Federal Court of Justice agreed with the appellate court's findings, namely, The cancellation of a trademark due to revocation, Not only on the date when the trademark rights are actually abandoned, And on the last day of a trial to hear a dispute over an annulment of the trademark, All already exist. 　　

but, The Federal Court of Justice is unsure whether the above interpretation is met "Directive of the European Parliament and of the Council on the harmonization and harmonization of trademark laws in the Member States (The first 2008/95/EC No) " (Hereinafter referred to as "European Union regulation 2008/95/EC Number instruction" ) The first 14 Provision of article——The EU trademark requires the right of abode for the prior trademark that has been abandoned or allowed to become invalid, The invalidity or revocation of an earlier trademark shall have retrospective effect. In addition, The court also proposed, After two of its German trademarks were abandoned, P&CHamburg Whether it can claim to continue to use the trademark in Germany, Can maintain the trademark rights attached to the two trademarks? The District Supreme Court held that no "Compensatory effect" , Therefore, the continued use of the trademark after cancellation should not be considered. The federal court of Justice is not sure, Whether the High Court was right in its conclusion, There are also doubts about the conclusions relating to the part on the effectiveness of the preemption right of the prior Member State of the EU trademark requirement. 　　

In view of this, The Federal Court of Justice requested the European Court of Justice to make a preliminary decision on the following questions: Eu trademarks require preemptive rights based on the trademark of the prior member state, Whether it is only the date on which the prior trademark is abandoned or allowed to lapse, And on the date of publication of the judgment invalidating or revoking the trademark, The conditions for its cancellation or invalidity exist, Only if it is invalid or revoked can it be retroactive? 　　

[conclusion] 　　

The European Court of Justice stated in its ruling in this case, The member States shall not continue to use the trademark after the cancellation "cure" effect, That is, the trademark cannot be used on the ground that it is still in use, To maintain the trademark rights attached thereto. Only use of the trademark within the three months preceding the filing of the petition for revocation will be considered. Therefore, The European Court of Justice held that, When judging whether the revocation effect of a trademark is retrospective, It is not necessary to consider after the trademark owner voluntarily renounces the trademark or allows the expiration of the trademark, The act of continuing to use the trademark. 　　The only effect of the EU trademark requirement on the right of preemption of the prior member's trademark is, Where the trademark owner of the prior member state abandons the prior trademark or allows it to become invalid, The prior trademark shall be deemed to continue to enjoy the same rights in its country of origin as when the trademark was registered. Therefore, This provision sets up a hypothetical situation: It ensures that the EU trademark owner can continue to enjoy trademark rights in the member States after the cancellation of the previous registered trademark as if the registration continues to be valid, There is no need to maintain the original registration of the prior trademark. The European Court of Justice held that, Any use of the said trademark after its cancellation, Are deemed to be using EU trademarks, Not a cancelled trademark. 　　

To emphasize the basis of its conclusion, The European Court of Justice stated that, for "European Union regulation 2008/95/EC Number instruction" The first 14 Interpretation of the provisions of the article, Has become effective after the dispute in this case "Directive of the European Parliament and of the Council on the harmonisation of the laws of the Member States relating to trademarks (The first 2015/2436 No) " The first 6 Confirmation of article. This article provides that, The only condition for retroactive effect of the revocation or invalidation of a trademark in the prior Member State, That is, when it is abandoned or allowed to lapse, The conditions for it to be declared invalid or revoked have been met. 　　European court of justice ruling, The understanding in Member State law of the conditions for retroactive effect of the revocation or invalidity of the trademark of the prior Member State in which the right of preemption is claimed——The conditions for invalidation or revocation have been met not only when the prior trademark is abandoned or allowed to lapse, And has been satisfied on the date of publication of its annulled or lapsed judgment——It does not comply with EU law. Therefore, As long as the prior trademark is abandoned or allowed to lapse, Where the conditions for invalidation or revocation have been met, That is, retroactive. 　　

[comment] 　　

For the EU trademark owner who has requested the right of preemption, When it voluntarily renounces the trademark right of the prior member state on which the right of preemption is based, or the permission becomes invalid, If the prior trademark has not been put into actual use and is in a state of invalidation, Then the ruling of this case will have a negative impact on this kind of EU trademark owner. Even if the trademark of a member state is abandoned or allowed to lapse after the right of preemption is claimed, It also means that the continued use of the trademark after it has been abandoned or allowed to lapse does not justify its revocation. From then on, Continued use is deemed to be the use of an EU trademark, Not the abandoned trademark of a member state. Therefore, For the risk of trademark rights instability caused by not being put into real use, irreparable, Nor can it be remedied through commercial use or reinstatement. For that matter, The right of preemption does not have the same rights as the abandoned trademark of the Member State. because, The commercial use of the trademark of a member State which is still in force can have the effect of countering the grounds for revocation, However, those who voluntarily give up the trademark right or allow the trademark to lapse when the reason for cancellation has appeared, It doesn't have the same effect. 　　

It is clear from the ruling in this case: Eu trademark has been requested for preemption rights, In the waiver of the corresponding member state trademark (Or the international registered trademark specifies the trademark of that country) before, It shall ensure that the trademark will not be retroactively revoked in the future. For this reason, Trademark owners need to analyze carefully, Whether it will be required to certify in the future, Before the date on which a trademark is voluntarily revoked or allowed to lapse 5 Within a year, The trademark has been put into real use. If the trademark of the member state is abandoned, A revocable cause already exists, The trademark is at high risk of being attacked by third parties, For example, in trademark infringement lawsuits, Ask that it be retroactively revoked, And this may lead to the invalidation of the preemption rights associated with EU trademarks. In other words, The trademark owner may simply make the wrong decision at the wrong time, Or potential adverse effects due to lack of proper legal analysis, And have to give up the advantage of the trademark in a particular field, And lead to adverse economic or commercial consequences. 　　however, Just as in this ruling, the trademark owner is required to carefully abandon the prior trademark for which the right of preemption has been claimed, If the infringement action is based on the right to preemption basic trademark right, And when the right holder decides to give up the underlying trademark, The trademark is already in a state that can be revoked because it has not been put into real use, This ruling provides the defendant with grounds to defend against the infringement charge. To make sure the defense strategy works, A careful analysis must be made of the potential weakness in the retrospective revocation of the trademark of the Member State on which the right of first place is based. When giving up the prior trademark, Whether the trademark has been put into real use, Could turn out to be a key fact in a case. 　　

compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights