1 July 2022
The ECJ preliminary ruling was in response to questions referred by the Bundesgerichtshof (the German Federal Court of Justice). The claimant in the underlying German action, HEITEC AG, took action against the use by the defendant of the trade name Heitech Promotion GmbH and various registered trade marks containing the word "heitech". The action was based on infringement of the claimant's rights in its trade name HEITEC and its registered EUTM, HEITEC.
After sending a warning letter to the defendant in April 2009, the claimant filed an action with the Nuremberg-Fürth Regional Court in December 2012 for injunctive relief and various claims under trade mark law. However, the action was not served until May 2014. (This was because the claimant repeatedly failed to submit originals of the statement of claim and to pay an advance on court costs.)
The lower court considered that the claimant's claims were time-barred due to acquiescence. The claimant had been aware of the use by the defendant of the Heitech marks/name for an uninterrupted period of at least five years, and had not taken sufficient measures to stop that use. The court action was too late, with there being more than five years between the sending of the initial warning letter (when the claimant must have had actual knowledge of the use of the later registered marks by the defendant) and the service of the claim on the defendant.
On appeal, the Bundesgerichtshof referred questions on the requirements for termination of the acquiescence period to the ECJ. It asked:
The ECJ started by examining the basis for the acquiescence regime. It aims to strike a balance between the interest of trade mark owners and other economic operators. Legal certainty for other operators is particularly relevant. Trade mark owners must be sufficiently vigilant by opposing the use of signs likely to infringe their marks where they are aware of the use of such signs.
The ECJ has already ruled (C-482/09 - Budějovický Budvar) that the filing of an administrative or court action ends the acquiescence period being an unequivocal expression of the trade mark owner's wish to oppose the use of the later mark and remedy the alleged infringement of its rights.
In the present case, it held that the mere sending of a warning letter on its own is insufficient to stop the clock. If the warning letter is unsuccessful, the trade mark owner must take the steps necessary to bring about a legally binding solution by bringing an administrative or court action. Any other interpretation would mean that a trade mark owner could send a warning letter every five years to circumvent the acquiescence regime.
The ECJ noted that, in the context of rules concerning judicial cooperation in civil matters, the date on which a court action is deemed to have been brought is the date on which the application initiating proceedings was lodged. However, 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, eg, C 489/14 and C 29/16).
The ECJ considered this rule to be relevant in the present case. It held that the decisive factor is the filing of the request for a judicial remedy, specifically the filing of the document instituting the proceedings. This is because, by filing a statement of claim, the trade mark owner clearly expresses a genuine and unambiguous wish to assert its rights.
However, the conduct of the claimant may, in certain cases, raise doubts as to that wish and the serious nature of the action. That might be the case where, owing to a lack of diligence on the part of the claimant, the application initiating proceedings is not served on the defendant.
It therefore seems that, if the claimant does not comply with the requirements of national law for service of the statement of claim, and if these deficiencies are not remedied until after the expiry of the five-year acquiescence period for reasons mainly attributable to the claimant, the filing of the statement of claim does not end the acquiescence period.
The Bundesgerichtshof must now examine whether it was mainly due to the claimant's conduct - in the sense of lack of due diligence - that the defects in service of the claim were not remedied until after the expiry of the acquiescence period. Having said this, it is questionable whether the ECJ's ruling will have any significance for the underlying infringement proceedings because the claimant's "HEITEC" trade mark has now been revoked due to lack of genuine use (T-520/19 - HEITEC).
The ECJ ruled that consequential claims under trade mark law, such as claims for damages, information and destruction, as well as claims for injunctive relief, are lost where there is limitation due to acquiescence. This was necessary for legal certainty. The owner of the later trade mark can therefore be sure that it will no longer be ordered to pay damages or even to destroy goods after the expiry of the acquiescence period.