In the case of AR v Cooper International Spirits LLC, a specific point was referred by the French Court of Cassation to the ECJ for a preliminary ruling: could the proprietor of a trade mark that has been revoked for non-use claim compensation for infringement on the basis of likelihood of confusion before the date on which the revocation took effect?

The CJEU stated that – in these circumstances – Member States have the option of allowing a trade mark proprietor to claim compensation for the injury sustained by a third party. Use does not need to be demonstrated for the five years after a mark is registered, and trade mark proprietors can rely on the exclusive rights conferred during this period. Infringing acts committed before revocation of a mark are still illegal.

The facts

The appellant in this case markets alcohol and spirits. In 2005, it applied for French trade mark for SAINT GERMAIN, which was registered in 2006. It brought trade mark infringement proceedings against Cooper and others. In parallel proceedings, its registered trade mark for SAINT GERMAIN was revoked.

The claim for infringement was dismissed on the ground that the mark in question had not been used since it had been filed. This was upheld by the Court of Appeal in France. The appellant had not successfully argued that the trade mark function as a badge of origin had been adversely affected (or the monopoly on use of its mark or the investment function). The appellant brought an appeal in cassation against the judgment.

The CJEU's conclusion

The likelihood of confusion analysis was confirmed to be considered by reference to the goods and services covered by the registration, not in relation to the use the proprietor has been able to make of the mark during the period. 

The CJEU allowed national legislatures the freedom to determine the effects of revocation or invalidity of trade marks, including the date on which revocation of a mark is effective. The French legislature had not included a provision in its legislation preventing a claim of infringement where the mark in question has been revoked).

For the damages awarded, these must be appropriate to the actual prejudice suffered by the trade mark proprietor. The fact there had not been any use of the mark did not preclude compensation for the infringing acts committed during the first five year period post registration.

Comment

The decision begs the question as to how much damage a proprietor would be able to prove if there has been no use of the mark and what amount of damages could be claimed. If there has been little or no use of the mark, damages are likely to be minimal. Better recovery may be achieved by basing the assessment for quantum on an account of profits. At the very least it's advisable to consider this as an alternative option.

Case Reference: C-622/18