HEITEC (Trade marks - Limitation in consequence of acquiescence - Judgment) [2022] EUECJ C-466/20 (19 May 2022)

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(Reference for a preliminary ruling - Trade marks - Directive 2008/95/EC - Article 9 - Regulation (EC) No 207/2009 - Articles 54, 110 and 111 - Limitation in consequence of acquiescence - Concept of ‘acquiescence’ - Interruption of the period of limitation in consequence of acquiescence - Sending of a warning letter - Date of interruption of the period of limitation in the event of a court action being initiated - Effects of limitation - Application for damages, the provision of information and destruction of goods)

REQUEST for a preliminary ruling under Article 267 TFEU from the Bundesgerichtshof (Federal Court of Justice, Germany), made by decision of 23 July 2020, received at the Court on 25 September 2020, in the proceedings

composed of C. Lycourgos (Rapporteur), President of the Chamber, S. Rodin, J.-C. Bonichot, L.S. Rossi and O. Spineanu-Matei, Judges,

- HEITECH Promotion GmbH and RW, by C. Rohnke, T. Winter and C. Augenstein, Rechtsanwälte,

- The European Commission, initially by T. Scharf, É. Gippini Fournier and J. Samnadda, and subsequently by T. Scharf and J. Samnadda, acting as Agents,

after hearing the Opinion of the Advocate General at the sitting on 13 January 2022,

1 This request for a preliminary ruling concerns the interpretation of Article 9 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), and Articles 54 and 111 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2 The request has been made in proceedings between, on the one hand, HEITEC AG (‘Heitec’) and, on the other, HEITECH Promotion GmbH (‘Heitech’) and RW concerning the use, by the latter, of the trade name HEITECH Promotion GmbH and trade marks containing the word element ‘heitech’.

‘It is important, for reasons of legal certainty and without inequitably prejudicing the interests of a proprietor of an earlier trade mark, to provide that the latter may no longer request a declaration of invalidity nor may he oppose the use of a trade mark subsequent to his own of which he has knowingly tolerated the use for a substantial length of time, unless the application for the subsequent trade mark was made in bad faith.’

4 Article 4 of that directive, headed ‘Further grounds for refusal or invalidity concerning conflicts with earlier rights’, provided:

‘1. A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:

(a) if it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier trade mark is protected;

(b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks;

(ii) trade marks registered in the Member State or, in the case of Belgium, Luxembourg or the Netherlands, at the Benelux Office for Intellectual Property;

(iii) trade marks registered under international arrangements which have effect in the Member State;

4. Any Member State may, in addition, provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:

(a) the trade mark is identical with, or similar to, an earlier national trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Member State concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark;

(b) rights to a non-registered trade mark or to another sign used in the course of trade were acquired prior to the date of application for registration of the subsequent trade mark, or the date of the priority claimed for the application for registration of the subsequent trade mark, and that non-registered trade mark or other sign confers on its proprietor the right to prohibit the use of a subsequent trade mark;

(c) the use of the trade mark may be prohibited by virtue of an earlier right other than the rights referred to in paragraph 2 and point (b) of this paragraph and in particular:

5 Article 9 of that directive, entitled ‘Limitation in consequence of acquiescence’, provided:

‘1. Where, in a Member State, the proprietor of an earlier trade mark as referred to in Article 4(2) has acquiesced, for a period of five successive years, in the use of a later trade mark registered in that Member State while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later trade mark was applied for in bad faith.

2. Any Member State may provide that paragraph 1 shall apply mutatis mutandis to the proprietor of an earlier trade mark referred to in Article 4(4)(a) or another earlier right referred to in Article 4(4)(b) or (c).

3. In the cases referred to in paragraphs 1 and 2, the proprietor of a later registered trade mark shall not be entitled to oppose the use of the earlier right, even though that right may no longer be invoked against the later trade mark.’

6 Directive 2008/95, which repealed and replaced First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), was in turn repealed and replaced, with effect from 15 January 2019, by Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1). However, having regard to the date of the facts giving rise to the dispute in the main proceedings, this reference for a preliminary ruling must be considered in the light of Directive 2008/95.

7 Article 8 of Regulation No 207/2009, entitled ‘Relative grounds for refusal’, provides:

‘1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

(a) if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected;

(b) if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the [EU] trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

(ii) trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property;

(iii) trade marks registered under international arrangements which have effect in a Member State;

(iv) trade marks registered under international arrangements which have effect in the [European Union];

(b) applications for the trade marks referred to in subparagraph (a), subject to their registration;

4. Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to [EU] legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the [EU] trade mark, or the date of the priority claimed for the application for registration of the [EU] trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

8 Article 54 of that regulation, entitled ‘Limitation in consequence of acquiescence’, provided:

‘1. ‘Where the proprietor of a [EU] trade mark has acquiesced, for a period of five successive years, in the use of a later [EU] trade mark in the [European Union] while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later [EU] trade mark was applied for in bad faith.

2. Where the proprietor of an earlier national trade mark as referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) has acquiesced, for a period of five successive years, in the use of a later [EU] trade mark in the Member State in which the earlier trade mark or the other earlier sign is protected while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark or of the other earlier sign either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later [EU] trade mark was applied for in bad faith.

9 Article 110 of that regulation, entitled ‘Prohibition of use of [EU] trade marks’, provided in paragraph 1:

‘This Regulation shall, unless otherwise provided for, not affect the right existing under the laws of the Member States to invoke claims for infringement of earlier rights within the meaning of Article 8 … in relation to the use of a later [EU] trade mark. Claims for infringement of earlier rights within the meaning of Article 8(2) and (4) may, however, no longer be invoked if the proprietor of the earlier right may no longer apply for a declaration that the [EU] trade mark is invalid in accordance with Article 54(2).’

10 Article 111 of Regulation No 207/2009, entitled ‘Prior rights applicable to particular localities’, provided:

‘1. The proprietor of an earlier right which only applies to a particular locality may oppose the use of the [EU] trade mark in the territory where his right is protected in so far as the law of the Member State concerned so permits.

2. Paragraph 1 shall cease to apply if the proprietor of the earlier right has acquiesced in the use of the [EU] trade mark in the territory where his right is protected for a period of five successive years, being aware of such use, unless the [EU] trade mark was applied for in bad faith.

3. The proprietor of the [EU] trade mark shall not be entitled to oppose use of the right referred to in paragraph 1 even though that right may no longer be invoked against the [EU] trade mark.’

11 Regulation No 207/2009 was repealed and replaced with effect from 1 October 2017 by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1). However, having regard to the date of the facts giving rise to the dispute in the main proceedings, this reference for a preliminary ruling must be considered in the light of Regulation No 207/2009.

12 Paragraph 21 of the Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Markengesetz) (Law on the protection of trade marks and other distinctive signs) of 25 October 1994 (BGBl. 1994 I, p. 3082), in the version applicable in the main proceedings (‘the Law on trade marks’), provides:

‘1. The proprietor of a trade mark or trade name is not entitled to prohibit the use of a later registered trade mark for the goods or services for which it is registered if he has knowingly tolerated the use of that trade mark for a period of five consecutive years unless the later trade mark was applied for in bad faith.

2. The proprietor of a trade mark or trade name is not entitled to prohibit the use … of a later trade name if he has knowingly tolerated the use of [that trade name] for a period of five consecutive years, unless the proprietor of that right was acting in bad faith at the time of its acquisition.

‘If a registered [EU] trade mark is invoked against the use of a later trade mark registered under this Act, Paragraph 21(1) … shall apply mutatis mutandis’.

The dispute in the main proceedings and the questions referred for a preliminary ruling

14 The applicant in the main proceedings, Heitec, is the proprietor of the EU word mark HEITEC, applied for on 18 March 1998, with seniority claimed as from 13 July 1991, and registered on 4 July 2005.

15 It was entered in the commercial register in 1984 under the name Heitec Industrieplanung GmbH. Its name was changed in 1988 to Heitec GmbH. Since the year 2000, it has been operating under the name of Heitec AG.

16 Heitech, of which RW is the managing director, was entered in the commercial register on 16 April 2003.

17 Heitech is the proprietor of a German figurative mark containing the word element ‘heitech promotion’, applied for on 17 September 2002 and registered on 4 February 2003, which it has used since 29 September 2004 at the latest, and of an EU figurative mark containing the word element ‘heitech’, applied for on 6 February 2008 and registered on 20 November 2008, which it has used since 6 May 2009 at the latest.

18 By letter of 29 November 2004, Heitech contacted the representatives of Heitec to ask whether the latter would agree to conclude a coexistence agreement.

19 On 7 July 2008 Heitec became aware of Heitech’s application for registration of the EU figurative mark containing the word element ‘heitech’.

20 By letter of 22 April 2009, Heitec sent Heitech a warning letter regarding the latter’s use of its trade name and the EU trade mark containing the word element ‘heitech’. In its reply of 6 May 2009, Heitech again proposed the conclusion of a coexistence agreement.

21 On 31 December 2012, the Landgericht Nürnberg-Fürth (Regional Court, Nuremberg-Fürth, Germany) received, by fax, the application initiating proceedings, submitted by Heitec against Heitech and RW. That application was dated 15 December 2012. By decision of 4 January 2013, Heitec was asked to pay an advance on the costs of the proceedings.

22 On 12 March 2013, that court pointed out to Heitec’s representative that that advance payment had not been made and that the originals of the application initiating proceedings had not been lodged.

23 By letter of 23 September 2013, Heitec informed Heitech that it refused to conclude a coexistence agreement and proposed to conclude a licence agreement while stating that it had initiated legal proceedings.

24 By letter of 29 December 2013, Heitec informed Heitech that it was relying on its trade name and that it was the proprietor of the EU trade mark HEITEC. It stated that the legal proceedings were pending.

25 On 30 December 2013, the Landgericht Nürnberg-Fürth (Regional Court, Nuremberg-Fürth) received written submissions from Heitec dated 12 December 2013, together with a cheque for court fees and a new application initiating proceedings bearing the date 4 October 2013.

26 On 14 January 2014, that court drew Heitec’s attention to the fact that it was also necessary to serve the application initiating proceedings of 15 December 2012 and Heitec was therefore asked to lodge the original documents. Those originals were received by the court on 22 February 2014.

27 On 24 February 2014, that court alerted Heitec to the fact that the heads of claim in the originals of the application initiating proceedings received on 22 February 2014 were not consistent with the heads of claim in the initiating application submitted on 31 December 2012.

28 On 16 May 2014, the Landgericht Nürnberg-Fürth (Regional Court, Nuremberg-Fürth) opened the preliminary written procedure and ordered that copies, drawn up by that court, of the initiating application of 15 December 2012 be served on the defendants in the main proceedings. Notice was finally served on 23 May 2014.

29 By that action, Heitec brought claims based, primarily, on the infringement of the rights conferred by its trade name HEITEC and, in the alternative, on the infringement of its EU trade mark HEITEC. It claimed that Heitech should be ordered to refrain from identifying its company by the trade name HEITECH Promotion GmbH, to refrain from affixing the word elements ‘heitech promotion’ and ‘heitech’ on goods and from marketing or advertising goods or services under those signs, to refrain from using or transferring, for commercial purposes, the website heitech-promotion.de and to agree to the removal of its company name from the commercial register. Heitec also brought claims for information, for a finding of an obligation to pay compensation, for the destruction of goods and for the payment of the costs of sending the warning letter.

30 The Landgericht Nürnberg-Fürth (Regional Court, Nuremberg-Fürth) ordered Heitech to pay Heitec EUR 1 353.80, plus interest, for the costs of sending the warning letter and rejected the other claims brought by Heitec.

31 Heitec appealed against the decision of the Landgericht Nürnberg-Fürth (Regional Court, Nuremberg-Fürth) before the Oberlandesgericht Nürnberg (Higher Regional Court, Nuremberg, Germany).

32 The Oberlandesgericht Nürnberg (Higher Regional Court, Nuremberg) held that Heitec’s action was unfounded on the ground that Heitec was time-barred. In that regard, it noted that Heitech had used its later signs for an uninterrupted period of at least five years and that Heitec had acquiesced in such use, since, although it was aware of that use, it had not taken sufficient measures to stop that use.

33 According to that court, that court action had not interrupted the period of limitation, since it had been served on Heitech and RW only after five years had elapsed since the warning letter which preceded that action.

35 That court notes that the outcome of the appeal depends on whether Heitec is, pursuant to Paragraph 21(1) and (2) of the Law on trade marks and Article 54(1) and (2) and Article 111(2) of Regulation No 207/2009, time-barred from bringing its claim for an injunction and its ancillary claims.

36 That court notes that the time-barring of Heitec’s claims relating, in essence, to the use by Heitech of the German trade mark of which the latter is the proprietor, is governed by Paragraph 21(1) of the Law on trade marks, read in conjunction with Paragraph 125b(3) of that law, in so far as those claims are based on the EU trade mark of which Heitec is the proprietor.

37 It states that Paragraph 21(1) of the Law on trade marks transposes into German law the limitation provided for in Article 9 of Directive 2008/95, on the right conferred by trade marks (Article 9(1) of Directive 2008/95) and by other signs - including trade names - used in the course of business (Article 9(2) of Directive 2008/95), to oppose the use of a registered trade mark.

38 In so far as Heitec opposes the use of the trade name Heitech, the limitation is, according to the findings of the referring court, governed by Paragraph 21(2) of the Law on trade marks. In this regard, that court states that, notwithstanding the fact that the scope of that provision goes beyond that of Directive 2008/95 and is not reflected in Article 54 of Regulation No 207/2009, it must be interpreted on the basis of the interpretation of Paragraph 21(1) of the Law on trade marks which is consistent with that directive.

39 As regards Heitec’s claims concerning the use by Heitech of the EU trade mark of which it is the proprietor, the referring court finds that Articles 54 and 110 and Article 111(2) of Regulation No 207/2009 are relevant.

40 That court notes that the Oberlandesgericht Nürnberg (Higher Regional Court, Nuremberg) did not err in law in finding that there was ‘use’, within the meaning of Paragraph 21(1) and (2) of the Law on trade marks and Articles 54 and 111 of Regulation No 207/2009, in the present case from 6 May 2009 at the latest and that Heitec had become aware of that by the letter of 6 May 2009 which Heitech had sent it. It is, moreover, common ground that Heitech is not accused of having acted in bad faith.

41 In the light of those circumstances, it is necessary to determine exactly what constitutes ‘acquiescence’ within the meaning of Article 9 of Directive 2008/95 and Articles 54 and 111 of Regulation No 207/2009.

42 In that regard, first, it is necessary to clarify whether it is possible to exclude acquiescence not only where an appeal is brought before an administrative authority or a court, but also in the event of the sending of a warning letter. Secondly, it is necessary to determine whether, in the event of a court action it is necessary to take as a basis, in order to determine whether that action was initiated before the expiry of the period of limitation, the date on which the document instituting the proceedings was lodged or the date on which that document was received by the defendant. It is necessary, in that context, to clarify whether the fact that the service of that document is delayed through the fault of the proprietor of the earlier mark is relevant in that regard.

43 It is also necessary to determine whether the time limit applies only to an application for an injunction or also to claims that are ancillary or related to such an application, such as claims for damages, the provision of information and the destruction of goods.

44 In those circumstances, the Bundesgerichtshof (Federal Court of Justice, Germany) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Can acquiescence within the meaning of Article 9(1) and (2) of [Directive 2008/95] and Article 54(1) and (2) and Article 111(2) of Regulation No 207/2009 be excluded not only by means of an administrative or court action, but also through conduct not involving a court or administrative authority?

does the sending of a warning letter, in which the proprietor of the earlier sign, before initiating legal proceedings, requires the proprietor of the later sign to agree to refrain from using the sign, and to enter into an obligation to pay a contractual penalty in the event of an infringement, constitute conduct precluding acquiescence within the meaning of Article 9(1) and (2) of [Directive 2008/95] and Article 54(1) and (2) and Article 111(2) of [Regulation No 207/2009]?

(3) When seeking judicial redress, is the bringing of the action before the court or the receipt of the action by the defendant decisive for calculating the five-year acquiescence period for the purposes of Article 9(1) and (2) of [Directive 2008/95] and Article 54(1) and (2) and Article 111(2) of [Regulation No 207/2009]? Is it significant in this regard that receipt of the action by the defendant is delayed beyond the expiry of the five-year period through the fault of the proprietor of the earlier trade mark?

(4) Does the limitation of rights in accordance with Article 9(1) and (2) of [Directive 2008/95] and Article 54(1) and (2) and Article 111(2) of [Regulation No 207/2009] encompass consequential claims under trade mark law, for example, claims for compensation, provision of information or destruction, as well as prohibitory injunctions?’

45 By its first and second questions, which it is appropriate to examine together, the referring court asks, in essence, whether Article 9 of Directive 2008/95 and Articles 54 and 111 of Regulation No 207/2009 must be interpreted as meaning that an act, such as a warning letter, whereby the proprietor of an earlier mark or other earlier right opposes the use of a later mark without bringing an administrative or judicial appeal, is capable of ending acquiescence within the meaning of those provisions.

46 It should be recalled that the regime for limitation in consequence of acquiescence provided for in the EU trade mark legislation pursues the objective of striking a balance between the interest which the proprietor of a trade mark has in safeguarding its essential function, on the one hand, and the interests of other economic operators in having signs capable of denoting their goods and services, on the other (see, to that effect, judgments of 27 April 2006, Levi Strauss, C-145/05, EU:C:2006:264, paragraph 29, and of 22 September 2011, Budějovický Budvar, C-482/09, EU:C:2011:605, paragraph 34).

47 In particular, by setting a period of limitation in consequence of acquiescence of five consecutive years with knowledge of the use of the later trade mark, the EU legislature sought to ensure that the protection conferred by an earlier trade mark on its proprietor remains limited to cases where the proprietor shows itself to be sufficiently vigilant by opposing the use of signs by other operators likely to infringe its mark (see, to that effect, judgment of 27 April 2006, Levi Strauss, C-145/05, EU:C:2006:264, paragraph 30).

48 More specifically, as noted in recital 12 of Directive 2008/95, the rule on limitation in consequence of acquiescence is intended to safeguard legal certainty. Where the proprietor of an earlier mark or other earlier right, within the meaning of Directive 2008/95 or Regulation No 207/2009, has knowingly ‘acquiesced’ in the use of a later mark applied for in good faith for a continuous period of five years, the proprietor of the latter mark must be certain in law that such use can no longer be challenged by the proprietor of that earlier mark or other earlier right.

49 For the purposes of applying that rule, the concept of ‘acquiescence’, which has the same meaning in Directive 2008/95 and in Regulation No 207/2009, means that the proprietor of that earlier mark or other earlier right remains inactive even though it is aware of the use of a later mark which it would be in a position to oppose. It ‘acquiesced’ by failing to take measures open to it to remedy that situation (see, to that effect, judgment of 22 September 2011, Budějovický Budvar, C-482/09, EU:C:2011:605, paragraphs 35 and 44).

50 It follows from the foregoing that the proprietor of an earlier mark or other earlier right is time-barred from seeking a declaration of invalidity or opposing the use of a later mark applied for in good faith, where, for a period of five consecutive years, while being aware of such use, it failed to carry out an act that clearly expressed its wish to oppose that use and to remedy the alleged infringement of its rights.

51 Such an interpretation of Article 9 of Directive 2008/95 and Articles 54 and 111 of Regulation No 207/2009 also applies to Article 110 of that regulation which may be relevant in a situation such as that at issue in the main proceedings, even though it was not mentioned in the questions referred. It must be observed, in that regard, that the rule regarding limitation in consequence of acquiescence as from the date of expiry of a period of five consecutive years with knowledge of the use of the later mark, laid down in Article 9 of Directive 2008/95, is referenced, as regards the EU trade mark, in Articles 54, 110 and 111 of Regulation No 207/2009.

52 As regards the conditions under which the proprietor of the earlier mark or other earlier right may be regarded as having carried out an act that produces the effects referred to in paragraph 50 above and therefore interrupts the period of limitation, the Court has held that, in any event, the bringing of an administrative or court action before the expiry of that period ends acquiescence and consequently prevents limitation (see, to that effect, judgment of 22 September 2011, Budějovický Budvar, C-482/09, EU:C:2011:605, paragraph 49).

53 By bringing such an action, the proprietor of the earlier mark or other earlier right unequivocally expresses its wish to oppose the use of the later mark and to remedy the alleged infringement of its rights.

54 Where, as in the present case, the bringing of that action was preceded by the sending of a warning letter, with which the proprietor of the later mark did not comply, that warning letter may interrupt the period of limitation in consequence of acquiescence provided that, following the unsatisfactory response to that warning letter, the proprietor of the earlier mark or other earlier right continues to express its opposition to the use of the later mark and takes the measures available to it to enforce its rights.

55 In contrast, if the proprietor of the earlier mark or other earlier right, having expressed its opposition to the use of the later mark by a warning letter, did not, after noting the refusal of the addressee of that letter to comply with it or to enter into negotiations, pursue its efforts within a reasonable period in order to remedy that situation, where appropriate by bringing an administrative or court action, it must be inferred that that proprietor failed to take the measures available to it to put an end to the alleged infringement of its rights.

56 Any interpretation of Article 9 of Directive 2008/95 and Articles 54, 110 and 111 of Regulation No 207/2009 to the effect that sending a warning letter is sufficient, in itself, to interrupt the period of limitation would allow the proprietor of the earlier mark or other earlier right to circumvent the regime for limitation in consequence of acquiescence by repeatedly sending a warning letter approximately every five years. Such a situation would undermine the objectives of the regime for limitation in consequence of acquiescence, referred to in paragraphs 46 to 48 above, and would deprive that regime of its effectiveness.

57 In the light of all the foregoing considerations, the answer to the first and second questions is that Article 9 of Directive 2008/95 and Articles 54, 110 and 111 of Regulation No 207/2009 must be interpreted as meaning that an act, such as a warning letter, by which the proprietor of an earlier mark or other earlier right opposes the use of a later mark without taking the necessary steps to obtain a legally binding solution, does not stop acquiescence and, consequently, does not interrupt the period of limitation.

58 By its third question, the referring court asks, in essence, whether Article 9 of Directive 2008/95 and Articles 54 and 111 of Regulation No 207/2009 must be interpreted to mean that the limitation in consequence of acquiescence referred to in those provisions may be prevented by the bringing of a court action in which the proprietor of an earlier mark or other earlier right seeks a declaration of invalidity of a later mark or opposes the use of that mark, where the application initiating proceedings, although filed before the date of expiry of the period of limitation, was not, owing to a lack of diligence on the part of the applicant, served on the defendant until after that date.

59 As noted in paragraph 52 above, the bringing of an administrative or court action before the expiry of that period ends acquiescence and consequently prevents limitation.

60 As regards the date on which a court action must be deemed to have been brought, the Court has held, in the context of its interpretation of rules adopted in the field of judicial cooperation in civil matters, that that date may be the date on which the application initiating proceedings was lodged, although the court concerned can be deemed to be seised at that time only if the applicant has not subsequently failed to take the steps it was required to take to have service effected on the defendant (see, inter alia, judgments of 6 October 2015, A, C-489/14, EU:C:2015:654, paragraph 32, and of 4 May 2017, HanseYachts, C-29/16, EU:C:2017:343, paragraph 29).

61 Although those rules, adopted in the field of judicial cooperation in civil matters, are not formally applicable in the present case, they are nevertheless relevant for the purposes of answering the third question. The time limit directly and immediately affects the possibility for the proprietor of the earlier mark or other earlier right to rely on that mark or right in court against the proprietor of the later mark. The applicant is therefore not time-barred as long as the action is brought within that five-year period.

62 In that regard, it must be held that, as the Advocate General observed in point 53 of his Opinion, the lodging of the application initiating proceedings normally reflects the genuine and unambiguous wish of the applicant to assert its rights, which is sufficient, in principle, to end acquiescence and, consequently, to interrupt the period of limitation.

63 The conduct of that party may nevertheless, in certain cases, raise doubts as to that wish and the serious nature of the action brought before the court seised. That is the case, in particular, where, owing to a lack of diligence on the part of the applicant, the application initiating proceedings is not rectified in good time when it fails to meet the formal requirements of national law for service on the defendant.

64 In such circumstances, which are attributable to the applicant, the latter cannot claim to have put an end to the acquiescence of the use of the later mark by lodging the application initiating proceedings. It is only by rectifying that application, in accordance with the requirements of the applicable national law, that the applicant is to be regarded as having unequivocally expressed a clear and serious intention to assert its rights and that, consequently, the action may be deemed to have been effectively initiated.

65 In the present case, it is apparent from the information set out in the order for reference and summarised in paragraphs 22 to 28 above that the court with which Heitec had lodged, on 31 December 2012, an application initiating proceedings, repeatedly contacted Heitec’s representative in order to draw its attention to irregularities that prevented service, on Heitech and RW, of both that application and the new application initiating proceedings subsequently lodged by Heitec. The application initiating proceedings appears to have been rectified between 24 February 2014, the date of the last reminder sent to Heitec by the court seised, and 16 May of that year, the date on which that court opened the preliminary written procedure.

66 It is also apparent from that order that, according to the findings of the trial court, of which the referring court takes note, there was knowledge of the use of the later mark on 6 May 2009.

67 In those circumstances, it is for the referring court to ascertain the date on which the application initiating proceedings was rectified in such a way as to enable the court seised to commence the proceedings and to serve that document on the defendants in the main proceedings. If the rectification did not take place until after the expiry of the period of limitation in consequence of acquiescence, it is for the referring court to assess whether that fact is mainly due to conduct on the part of the applicant in the main proceedings which may be characterised as a lack of diligence. If that court were to take the view that that was the case, it would have to conclude that, due to Heitec’s lack of diligence, its action must be regarded as time-barred.

68 In the light of all the foregoing considerations, the answer to the third question is that Article 9 of Directive 2008/95 and Articles 54, 110 and 111 of Regulation No 207/2009 must be interpreted to mean that the limitation in consequence of acquiescence referred to in those provisions may not be prevented by the bringing of a court action in which the proprietor of an earlier mark or other earlier right sought a declaration of invalidity of a later mark or opposed the use of that mark, where the application initiating proceedings, although filed before the date of expiry of the period of limitation, did not, owing to a lack of diligence on the part of the applicant, satisfy the requirements of the applicable national law for service and was rectified only after that date for reasons attributable to the applicant.

69 By its fourth question, the referring court asks, in essence, whether Article 9 of Directive 2008/95 and Articles 54 and 111 of Regulation No 207/2009 must be interpreted as meaning that, where the proprietor of an earlier mark or other earlier right, within the meaning of those provisions, is time-barred from seeking a declaration of invalidity of a later mark and from opposing the use of that mark, that proprietor is also time-barred from bringing ancillary or related claims, such as claims for damages, the provision of information or the destruction of goods.

70 As explained in the context of the examination of the first and second questions, the proprietor of an earlier mark or other earlier right that, while being aware of the use of a later mark applied for in good faith, fails, for a continuous period of five years, to act in a manner that unequivocally expresses its wish to oppose that use and to remedy the alleged infringement of its rights is time-barred from challenging the use of that later mark.

71 As the Advocate General observed in point 64 of his Opinion, it would be contrary to the objectives of the regime for limitation in consequence of acquiescence, most notably the safeguarding of legal certainty, to allow, in such a situation, that proprietor to bring an action against the proprietor of that later mark after the end of that period of five consecutive years seeking that the latter be ordered to pay damages or seeking injunctions against the latter.

72 If such an action or such claims were to succeed after the expiry of the period of limitation, it would amount to leaving intact, beyond that date, the possibility of a finding that the use of the later mark infringes the earlier mark or the earlier right and of attributing, on that basis, non-contractual liability to the proprietor of the later mark. Such an interpretation of the regime of limitation in consequence of acquiescence would undermine the objective pursued by that regime, which is to give the proprietor of the later trade mark the certainty, at the end of that period, that the use of that mark can no longer be challenged, by whatever legal means, by the person that has knowingly acquiesced in its use for an uninterrupted period of five years.

73 In the light of all the foregoing considerations, the answer to the fourth question is that Article 9 of Directive 2008/95 and Articles 54, 110 and 111 of Regulation No 207/2009 must be interpreted as meaning that, where the proprietor of an earlier mark or other earlier right, within the meaning of those provisions, is time-barred from seeking a declaration of invalidity of a later mark and from opposing the use of that mark, that proprietor is also time-barred from bringing ancillary or related claims, such as claims for damages, the provision of information or the destruction of goods.

74 Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.

1. Article 9 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks and Articles 54, 110 and 111 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark must be interpreted as meaning that an act, such as a warning letter, by which the proprietor of an earlier mark or other earlier right opposes the use of a later mark without taking the necessary steps to obtain a legally binding solution does not stop acquiescence and, consequently, does not interrupt the period of limitation.

2. Article 9 of Directive 2008/95 and Articles 54, 110 and 111 of Regulation No 207/2009 must be interpreted to mean that the limitation in consequence of acquiescence referred to in those provisions may not be prevented by the bringing of a court action in which the proprietor of an earlier mark or other earlier right sought a declaration of invalidity of a later mark or opposed the use of that mark, where the application initiating proceedings, although filed before the date of expiry of the period of limitation, did not, owing to a lack of diligence on the part of the applicant, satisfy the requirements of the applicable national law for service and was rectified only after that date for reasons attributable to the applicant.

3. Article 9 of Directive 2008/95 and Articles 54, 110 and 111 of Regulation No 207/2009 must be interpreted as meaning that, where the proprietor of an earlier mark or other earlier right, within the meaning of those provisions, is time-barred from seeking a declaration of invalidity of a later mark and from opposing the use of that mark, that proprietor is also time-barred from bringing ancillary or related claims, such as claims for damages, the provision of information or the destruction of goods.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> HEITEC (Trade marks - Limitation in consequence of acquiescence - Judgment) [2022] EUECJ C-466/20 (19 May 2022) URL: http://www.bailii.org/eu/cases/EUECJ/2022/C46620.html Cite as: EU:C:2022:400, [2022] EUECJ C-466/20, ECLI:EU:C:2022:400

Court of Justice of the European Communities (including Court of First Instance Decisions)