Editor's note: The owner of a European Union trademark filed a lawsuit, Defendant unauthorised use of Plaintiff's EU trademark as "Hidden key (hidden keyword) " On a website, Violated the plaintiff's trademark rights. These infringements occurred when the EU trademark application was not published, And continue until the EU trademark registration notice. The plaintiff has set out three claims, How will the court decide? Look down together!

[background] The owner of a European Union trademark filed a lawsuit, Defendant unauthorised use of Plaintiff's EU trademark as "Hidden key (hidden keyword) " On a website, Violated the plaintiff's trademark rights. These infringements occurred when the EU trademark application was not published, And continue until the EU trademark registration notice. The plaintiff set out three claims in the complaint: (1) Ask the defendant to stop the infringement; (2) The defendant is required to return the wrongful gain from the tort, The amount is calculated by multiplying the number of days of infringement by the license amount specified in the License agreement; and, (3) The defendant is required to compensate the plaintiff for the emotional loss caused by the tort. The hearing court decided to suspend the proceedings, And asked the European Court of Justice (Court of Justice) Made a preliminary ruling on three issues in the case.

[conclusion] The first question posed by the court of Admissibility, "European Union regulations on trademarks of the European Union (The first 207/2009 No) " (Hereinafter referred to as "European Union regulation 207/2009 No" ) The first 102. 1 Article should be read as: When the trademark owner does not apply for an injunction, The Trademark Court of the European Union may issue an injunction requesting a third party to stop trademark infringement? Court of Justice of the European Union ruling, "European Union regulation 207/2009 No" The first 102. 1 The article does not prohibit the EU Trademark Court from following the principles of the civil procedure law of a particular Member State, In the absence of an injunction from the plaintiff, Issue an injunction requiring a third party to stop trademark infringement. The second and third questions of the Court of Admissibility in this case are directed at "European Union regulation 207/2009 No" The first 9. 3 Article related "compensation" Stipulation of: (1) Whether the EU trademark owner can claim compensation from a third party for its conduct prior to the publication of the EU trademark application? and, (2) The third party exercises trademark infringement during the period between the publication of the EU trademark application and the publication of the EU trademark registration, The first 9. 3 Strip center "Just compensation (reasonable compensation) " Can it be understood as the compensation aimed at making up for all the losses suffered by the trademark owner, namely, The material loss and spiritual loss of the trademark owner caused by the third party's infringement? To the second question from the court of Admissibility, The European Court of Justice ruled that: "European Union regulation 207/2009 No" The first 9. 3 The first sentence of article provides, The trademark owner shall not claim compensation for any third party's actions before the trademark right registration is published, And control 9. 3 The second sentence of the article provides for an exception (If a third party is exercised after the EU trademark application is made public, After the trademark registration announcement shall be recognized as an infringement of trademark rights, Then the trademark owner shall have the right to require the third party to undertake this act after the trademark registration announcement "Just compensation" responsibility, Translator's note) . Therefore, For any act prior to publication of the EU trademark application, The trademark owner cannot claim compensation from any third party. The Court of Justice of the European Union is based on the following, Answered the court concerned "Just compensation" The problem of interpretation of concepts: -The legal right to apply for a trademark in the EU is conditional, There is no certainty that the trademark application will eventually be registered; -Therefore, The scope of damage compensation proposed by the trademark owner based on the trademark application should theoretically be smaller than the scope of compensation that can be proposed based on the registered trademark; - "European Union regulation 207/2009 No" The first 96 The provisions of the article distinguish between the two situations of conduct: " (The Court of Justice of the European Union has exclusive jurisdiction over the following acts) : (a) Any infringement... ; (c) This ordinance 9. 3 The conduct specified in the second sentence of the article... " ; - "Eu directive on enforcement of intellectual property rights (The first 2004/48/EC No) " The first 13 The article provides for "compensation" Content of, On one hand, The person who infringes the trademark right in bad faith shall be liable for all the actual losses caused (Including emotional loss) Make compensation; On the other hand, The person who infringes the trademark right without malicious intent shall return the improper benefits obtained from the infringing act, Or pay damages as agreed. According to the above analysis, "European Union regulation 207/2009 No" The first 9. 3 prescribed "Just compensation" The scope shall be less than the scope of infringement damages that the trademark owner can claim based on the registered EU trademark. Therefore, "Just compensation" It shall be limited to the actual improper benefits obtained by the third party after the infringement, It does not include compensation for emotional distress. Based on this, Court of Justice of the European Union ruling: " (1) "European Union regulation 207/2009 No" The first 102. 1 Article shall be understood as, The Regulation does not prohibit the EU Trademark Court from relying on the legal principles of civil procedure in particular Member States, In the absence of an injunction filed by the plaintiff, Issue an injunction ex officio requiring a third party to cease further infringement. (2) "European Union regulation 207/2009 No" The first 9. 3 The second sentence of the article should be read as, For the use of the trademark by a third party before the publication of the EU trademark application, The EU trademark owner shall not claim compensation from a third party. Illegal acts of a third party between the publication of the EU trademark application and the publication of the EU trademark registration, The EU trademark owner has the right to claim responsibility from a third party 'Just compensation' responsibility, The scope of indemnity is limited to the benefits actually obtained by the third party as a result of the conduct during the said period, It does not include the mental loss and other damages caused by the above actions of the trademark owner. "

[comment] After determining the existence of infringement, The trademark owner may claim for losses arising from the publication of the EU trademark application "Just compensation" . "Just compensation" The scope is limited to the actual benefit of the third party as a result of the illegal act, It does not include other damages that may be suffered, Such as mental damage.

compile: Liu Dan, The source of Aisabri Legal Counsel: Esabaril (ELZABURU) Intellectual property rights