On 18 May 2021, the Polish Supreme Court issued a much-awaited ruling to resolve doubts concerning the national limitation period for non-pecuniary claims in trademark matters. The resolution was adopted in an infringement case concerning a frontline EU trade mark (EUTM) owned by Audi AG.

A notable aspect of the Supreme Court’s resolution concerns national rules for the limitation period for injunction claims for infringements. The Supreme Court has resolved a legal issue in this resolution (III CZP 30/20) which – in line with the procedural rules – has been referred to as a separate case for recommendation to the enlarged panel (III CZP 47/19). 

The legal question reads as follows:

"Are non-monetary claims, including a claim for prohibiting infringement of the right of protection for a European Union trade mark, necessarily barred by a five-year limitation period which starts on the first day on which the trade mark proprietor’s exclusive rights are infringed, even though the acts of the infringer were not one-off, but continuous (repeated) and continue at the time when the claim is made?"

The Polish Supreme Court ruled that if the infringement of an EU trade mark right is recurring and continues at the time of filing a non-monetary claim (including an injunction claim), the five-year limitation period runs from each day on which the infringement occurs.

The reasoning behind the resolution is not yet available (and we don't expect it to be available for several months).

Comment

Although the Audi case concerned an EUTM infringement, the Supreme Court did not rule on acquiescence, but prescription rules under national law. There is no guidance from the CJEU around whether national prescription rules apply given the EUTM has the institute of acquiescence as a statutory limitation. 

In her opinion on Budjovický Budvar vs. Anheuser-Busch, AG Trstenjak observed that the legislature opted in favour of limitation as a result of acquiescence and, no doubt intentionally, against prescription (see Case C-482/09, para. 76). 

It doesn't seem convincing to apply national rules of limitation to EUTM infringements, or at least to the injunctive relief. National courts can only rely on the procedural rules that would apply to a national trade mark (Article 129(3) of Regulation 2017/1001) in an EU trade mark case where nothing is regulated. 

If there is a prescription after five years – even theoretically – acquiescence arguably becomes irrelevant. It seems that in Poland, the opinion is that national prescription rules do apply to EUTMs infringements. Regardless, the acquiescence limitation period starts when the proprietor becomes aware of the use and registration of that trade mark (Art. 9 Directive 2015/2436, Art. 61 of Regulation 2017/1001; see also the General Court's 28 June 2012 judgment, Marchi Italiani Srl and Antonio Basile/OHIM – Osra SA, T-133/09, para. 33). 

However, when applying the national rules of prescription to EUTM infringements, the Supreme Court argues that for continuous acts, the start of the limitation period should be calculated separately for each EUTM infringement.

So far, there has been a significant divergence of judicial practice on the issue of calculating injunction claim limitation periods resulting from recurrent or continuous infringement. Under Polish law, all trade mark infringement claims are:

• time barred after three years; the time bar starts to run from the day on which the trade mark right holder learns of the infringement and of the person who infringed, separately for each infringement, or 
• time-barred after five years from the date on which the infringement occurred (ie independently of any knowledge).

A uniform approach to calculating limitation periods for claims stemming from single, recurrent or continuous infringement is appreciated. However, so far there is no CJEU case law on whether national prescription rules even apply to EUTM infringements. Since the EUTM must be given uniform protection in the entire EU, the application of national prescription statutes leads to diverging levels of EUTM protection in different EU territories. 

In the interests of greater legal certainty, one of the national courts needs to bring this fundamental question before the CJEU – it's no longer enough for them to engage in discussions about how the national prescription rules should be applied.