2020 years 3 month 26 day, Being affected by the novel coronavirus (COVID-19) Before the impact of the pandemic, The European Court of Justice has issued an interesting ruling (Case number: C-622/18) , It involves demanding damages for trademark infringement, But the trademark rights on which the claim is based have been revoked because they were not actually used.

　　The preliminary ruling was based on a request from France's highest appeals court, At issue in the case is a French trademark "SAINT GERMAIN" (Designated for use on alcoholic beverage products, Hereinafter referred to as "Trademark involved" ) The trademark owner sued an enterprise for production and sales "St-Germain" Liqueur's behavior infringes on its trademark rights. In the course of infringement proceedings, The trademark involved was revoked because it was not put into real use, but, The plaintiff in the infringement action insisted that the defendant pay compensation for the infringement damage he suffered during the period before the trademark in question was revoked.

　　The trademark involved is 2006 years 5 Monthly registration, 2013 years 2 month 28 The day was declared invalid, Invalid effect retroactive to 2011 years 5 month 13 day, That is, five years from the date of registration of the trademark. That is to say, The trademark has never been in real use since it was registered. but, The trademark owner still requires the infringement defendant to file a lawsuit against him 2009 years 6 month 8 sunrise 2011 years 5 month 13 Compensation for trademark infringement during the day.

　　The validity of the declaration of trademark invalidation in French law is as follows: "Where the trademark owner fails to use the registered trademark on the specified goods or services for five consecutive years without justifiable reasons, Its trademark right shall be revoked. The effect of revocation shall take effect on the date of expiration of the five-year period provided for in Paragraph 1 of this Article, Is absolute force. "

　　At issue in this case is, One was never put to real use, The right holder of a trademark that has been revoked after the expiration of the five-year period prescribed by law, Whether a third party can use the same or similar mark with the trademark involved, It infringes on the basic function of its trademark, The bank is required to compensate for such use within five years from the date of registration of the trademark involved?

　　The European Court of Justice said in its ruling, "Eu directive on harmonisation and harmonisation of trademark laws in Member States" Stipulated in, Member States are free to determine the effectiveness of trademark revocation. Therefore, Legal provisions of member states (trademark) The effect shall be revoked on the date of expiration of the five-year period in which it has not been put into use, It is not against EU law. Therefore, If the laws of the member states permit, The relevant trademark owner shall not be prohibited from claiming compensation for the infringement suffered while the trademark right was still in force.

　　As for the calculation of compensation, The European Court of Justice stated that, "Directive of the European Parliament and the European Commission on the enforcement of intellectual property rights (The first 2004/48/EC No) " stipulation, indemnity "with (Trademark owner) The actual loss suffered as a result of the tort is equivalent" . although, The fact that a trademark was never put into actual use, Does not affect its claim for tort damages, But in determining whether there was actual damage, The extent to which the trademark owner is harmed, And the specific amount of damages that can be claimed, Remains an important factor to consider.

　　The likely impact of the ruling on Spain, Should pay attention to, "Spanish trademark law" The first 60 The Article shall stipulate the validity of the revocation of a trademark: "As of the date on which an application for cancellation is declared or the counterclaim for cancellation is requested, Within the scope of revocation of trademark rights, A registered trademark shall be deemed to have no effect as provided for in this Law. At the request of a party, This may be stated in the decision taken on the revocation application or request, The earlier date on which the grounds for revocation appear. " The appeal provisions of Spanish law are basically copied "Implementing Rules of the European Parliament and of the Council on EU Trademarks (The first (EU) 2017/1001 No) " The first 62 Content of a bar, Therefore, The same is true of EU trademarks.

　　In summary, After the applicant submits the application for declaring the cancellation of the registered trademark, According to Spanish law, The revocation is also retroactive to the expiration of the five-year period of continuous non-use of the trademark. No matter what, The trademark owner may claim compensation for the infringement of his trademark right by others during the period when his trademark has not been revoked. but, How would a Spanish court determine damages in a similar case, We still have to wait and see.

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