202101.14

France: action of the owner of a revoked trademark with regard to acts of infringement occurring before the revocation

Mr. B. was the owner of the French semi-figurative trademark “Saint Germain” n° 3 395 502, filed on December 5, 2005, to designate, in classes 30, 32, and 33, in particular, alcoholic beverages (except beers), ciders, digestives, wines and spirits, alcoholic extracts or essences. On June 8, 2012, Mr. B. sued St Dalfour and Etablissements Gabriel Boudier (manufacturers of a liquor named “St-Germain”) and Cooper International Spirits (distributor of this liquor) for infringement of the “Saint Germain” trademark. However, a judgment of February 11, 2014, delivered in another case, deprived Mr. B. of its rights on the “Saint Germain” trademark as of May 13, 2011. Despite the circumstances, Mr. B. maintained his requests for the period between June 8, 2009, and May 13, 2011. On September 13, 2016, the Paris Court of Appeal considered that Mr. B. had no proof of any trademark use since its filing. Therefore, he was not in the position to sue any third party for trademark infringement. Mr. B. appealed on points of law before the Cour de cassation. He argued that the trademark owner might prohibit third parties from making use, in the course of trade, of a sign identical to his trademark and likely to impair the trademark’s functions without demonstrating genuine use of the said trademark for those products or services.

The facts led the Cour de cassation to refer the following preliminary question to the Court of Justice of the European Union (CJEU): 

“Must Article 5(1)(b) and Articles 10 and 12 of Directive [2008/95] be interpreted as meaning that a proprietor who has never [used his or her] trade mark and whose rights in it were revoked on expiry of the period of five years following publication of its registration can obtain compensation for injury caused by infringement, claiming an adverse effect on the essential function of [his or her] trade mark, caused by use by a third party, before the date on which the revocation took effect, of a sign similar to that trade mark to designate goods or services identical or similar to those for which that trade mark was registered?” (CJEU, 26 March 2020, Case C‑622/18, Cooper International Spirits LLCcuria.europa.eu).

On March 26, 2020, the CJEU adopted the following solution:

“Article 5(1)(b), the first subparagraph of Article 10(1) and the first subparagraph of Article 12(1) of Directive 2008/95/EC of the European Parliament and of the Council of October 22, 2008, to approximate the laws of the Member States relating to trade marks, read in conjunction with recital 6 thereof, must be interpreted as leaving Member States the option of allowing the proprietor of a trade mark 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 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.” (CJEU, 26 March 2020, Case C‑622/18, Cooper International Spirits LLCcuria.europa.eu).

The Cour de cassation then rendered its decision on November 4, 2020. The decision overturns the judgment of the Paris Court of Appeal of September 13, 2016. It retains the following ruling:

“Given that the revocation of a trademark, declared under Article L. 714-5 of the [French] Intellectual Property Code, only produces effects at the expiration of an uninterrupted period of five years without genuine use, the owner of the trademark is entitled to invoke the infringement of the said trademark rights that may have been caused by acts of infringement occurring before its revocation”. 

As a result, the case was referred to the Paris Court of Appeal (otherwise composed).

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