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HEITEC versus HEITECH – Kather Augenstein for HEITECH Promotion GmbH successful at the European Court of Justice in Luxembourg

The European Court of Justice in Luxembourg (ECJ) rules on the forfeiture of trademark claims

In the trademark dispute between the plaintiff, HEITEC AG, on the one hand, and the two defendants, HEITECH Promotion GmbH and its managing director RW, on the other hand, the ECJ has now given its judgment on 19 May 2022. The Federal Court of Justice had stayed the proceedings and referred legal questions to the court concerning the forfeiture of claims under trade mark law with a view to interpreting them in conformity with EU law.

1. Facts of the case

Specifically, the plaintiff is defending itself against the defendant’s use of the corporate mark “HEITEC”. The defendant has been using the company sign “HEITECH” since 2004 at the latest. On 6 February 2009, it filed an application for its EU trade mark, which was registered on 20 November 2008. Although the plaintiff had been aware of the application for this trade mark since 7 July 2008, it did not issue a warning to the defendant until April 2009 and filed an action with the Nuremberg-Fürth Regional Court on 31 December 2012. However, this was not served until 23 May 2014, i.e. more than five years after the defendant HEITECH Promotion GmbH had been warned, inter alia due to the plaintiff’s delay in paying the court costs.

2. Legal background

The primary issue is the legal question of the forfeiture of the trademark claims asserted by HEITEC.

After the Nuremberg-Fürth Regional Court and the Nuremberg Higher Regional Court held that the claims asserted in the action had been forfeited, the Federal Court of Justice saw the need to stay the proceedings and to submit the respective legal questions to the ECJ for a preliminary ruling.

Specifically, the question was whether the warning by the owner of the earlier trade mark, i.e. HEITEC, already prevents forfeiture or whether the involvement of an authority or court action is required for this.

In addition, the Federal Court of Justice (FCJ) wanted to know from the ECJ whether, for the calculation of the five-year acquiescence period within the meaning of the relevant European directives, the filing of the appeal with the court or the receipt of the appeal by the opponent of the claim is decisive in the case of a judicial remedy. Finally, the question was whether forfeiture also covers subsequent claims under trade mark law, such as claims for damages, information and destruction, in addition to claims for injunctive relief.

Pursuant to Section 21 MarkenG, claims for injunctive relief under trade mark law are generally excluded if the proprietor of a trade mark or business designation has tolerated the use of that trade mark for a period of five consecutive years with knowledge of that use. This provision is based on Article 9(1) and (2) of the EU Trade Mark Directive (EU) 2015/2436.

3. Decision and reasons for the decision

According to the ECJ, the relevant provisions of European law – Article 9 of Directive 2008/97 and Articles 54, 110, 111 of Regulation No 207/2009 – must be interpreted as meaning that “an act, such as a warning notice, by which the proprietor of an earlier trade mark or other earlier right opposes the use of a later trade mark without, however, taking the steps necessary to bring about a legally binding solution, does not put an end to acquiescence.” Accordingly, a warning notice does not terminate the forfeiture period.

Put simply: a warning notice is thus not sufficient to allege an infringement of trade mark rights; rather, what is required is legal or official action.

With regard to the question whether the filing or the service of the action is decisive for the time of forfeiture, the ECJ agreed with our argumentation and ruled that – even if the filing is in principle decisive – the plaintiff must not be negligent, but must push the proceedings so far that the action is also served. Thus, in view of legal certainty, it was not to the plaintiff’s credit if he initiated proceedings but then – possibly even intentionally – left them in a state of suspense. Nevertheless, according to the ECJ, it should matter whether the plaintiff had done everything within the five-year period to effect service. In the present case, HEITEC AG had indeed filed a statement of claim in due time on 31 December 2012. However, the court repeatedly approached HEITEC AG’s representative to point out deficiencies that prevented the service of various statements of claim. For example, HEITEC AG did not pay the advance on court costs until approximately one year later.

Finally, according to the ECJ’s judgment, forfeiture also extended to all ancillary or consequential claims, such as possible claims for damages, information or the destruction of goods.

4. Significance of the Judgment

The ECJ’s case law above all concretises the scope of use of corresponding business signs and standardises limits for the assertion of claims under trade mark law by the owners of earlier rights. Against the background of the legal clarity thus created, this judgement is therefore very welcome.

In essence, the decision corresponds to the decisions preliminary instances. In particular, it is gratifying that the ECJ has now clarified that a warning notice cannot interrupt the forfeiture period and that forfeiture also covers claims for damages. The European Court of Justice rules on forfeiture of trademark claims