CELEX: 62015CJ0280
Reference for a preliminary ruling
EU trade mark
Regulation (EC) No 207/2009
Article 9(3) and Article 102(1)
Obligation on an EU trade mark court to issue an order prohibiting a third party from proceeding with acts of infringement
No application seeking such an order
Concept of ‘special reasons’ for not ordering such a prohibition
Concept of ‘reasonable compensation’ in respect of acts occurring after publication of an application for registration of an EU trade mark and before publication of the registration of the trade mark

This request for a preliminary ruling concerns the interpretation of Article 9(3) and Article 102(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (
OJ 2009 L 78, p. 1
).
The request has been made in an action brought by Irina Nikolajeva against Multi Protect OÜ for infringement of an EU trade mark.
Legal context
EU law
Regulation No 207/2009
Article 9 of Regulation No 207/2009, headed ‘Rights conferred by an EU trade mark’, states:
‘1.   An EU trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a)
any sign which is identical with the EU trade mark in relation to goods or services which are identical with those for which the EU trade mark is registered;
(b)
any sign where, because of its identity with, or similarity to, the EU trade mark and the identity or similarity of the goods or services covered by the EU trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
...
2.   The following, inter alia, may be prohibited under paragraph 1:
(a)
affixing the sign to the goods or to the packaging thereof;
(b)
offering the goods, putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;
(c)
importing or exporting the goods under that sign;
(d)
using the sign on business papers and in advertising.
3.   The rights conferred by an EU trade mark shall prevail against third parties from the date of publication of registration of the trade mark. Reasonable compensation may, however, be claimed in respect of acts occurring after the date of publication of an EU trade mark application, which acts would, after publication of the registration of the trade mark, be prohibited by virtue of that publication. The court seised of the case may not decide upon the merits of the case until the registration has been published.’
Article 14 of Regulation No 207/2009, headed ‘Complementary application of national law relating to infringement’, provides:
‘1.   The effects of EU trade marks shall be governed solely by the provisions of this Regulation. In other respects, infringement of an EU trade mark shall be governed by the national law relating to infringement of a national trade mark in accordance with the provisions of Title X.
2.   This Regulation shall not prevent actions concerning an EU trade mark being brought under the law of Member States relating in particular to civil liability and unfair competition.
3.   The rules of procedure to be applied shall be determined in accordance with the provisions of Title X.’
As stated in Article 96 of Regulation No 207/2009, headed ‘Jurisdiction over infringement and validity’:
‘The EU trade mark courts shall have exclusive jurisdiction:
(a)
for all infringement actions ...;
...
(c)
for all actions brought as a result of acts referred to in Article 9(3), second sentence;
...’
Article 101 of Regulation No 207/2009, headed ‘Applicable law’, provides:
‘1.   The EU trade mark courts shall apply the provisions of this Regulation.
2.   On all matters not covered by this Regulation an EU trade mark court shall apply its national law, including its private international law.
3.   Unless otherwise provided in this Regulation, an EU trade mark court shall apply the rules of procedure governing the same type of action relating to a national trade mark in the Member State in which the court is located.’
Article 102 of Regulation No 207/2009, headed ‘Sanctions’, provides:
‘1.   Where an EU trade mark court finds that the defendant has infringed or threatened to infringe an EU trade mark, it shall, unless there are special reasons for not doing so, issue an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the Community trade mark. It shall also take such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with.
2.   In all other respects the EU trade mark court shall apply the law of the Member State in which the acts of infringement or threatened infringement were committed, including the private international law.’
Directive 2004/48/EC
Article 13 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (
OJ 2004 L 157, p. 45
, and corrigendum at
OJ 2004 L 195, p. 16
), headed ‘Damages’, provides:
‘1.   Member States shall ensure that the competent judicial authorities, on application of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in an infringing activity, to pay the rightholder damages appropriate to the actual prejudice suffered by him/her as a result of the infringement.
When the judicial authorities set the damages:
(a)
they shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the rightholder by the infringement;
or
(b)
as an alternative to (a), they may, in appropriate cases, set the damages as a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question.
2.   Where the infringer did not knowingly, or with reasonable grounds [to] know, engage in infringing activity, Member States may lay down that the judicial authorities may order the recovery of profits or the payment of damages, which may be pre-established.’
Estonian law
Paragraph 8(2) of the kaubamärgiseadus (Law on Trade Marks) of 22 May 2002 (RT I 2002, 49, 308), in the version applicable in the main proceedings, provides:
‘The legal protection of a registered trade mark begins on the date of filing of the application for registration … and continues in existence for ten years from the date of registration’.
Paragraph 57 of that law, headed ‘Protection of the exclusive right’, provides in subparagraph 1:
‘The trade mark proprietor may bring an action against a person who infringes the exclusive right, including against any licensee who has breached the terms of the licence agreement, seeking:
(1)
termination of the infringement of the right;
(2)
compensation for financial damage caused intentionally or negligently, including lost profit, and damages for non-material harm.
...’
Paragraph 4(2) of the tsiviilkohtumenetluse seadustikus (Code of Civil Procedure) of 20 April 2005 (RT I 2005, 26, 197), in the version applicable in the main proceedings (‘the Code of Civil Procedure’), states:
‘In legal proceedings, the parties shall determine the subject matter of the dispute and the course of the procedure and shall decide on the making of applications and the lodging of appeals.’
Paragraph 5 of that code, headed ‘Proceedings conducted on the basis of the requests of the parties’, provides in subparagraph 1:
‘An action shall proceed on the basis of the facts as set out by the parties and the applications made, based on the claim.’
Paragraph 439 of that code, headed ‘Limits on adjudication upon the action’, provides:
‘In its decision, the court may not go beyond the limits of the claim and may not decide on a claim that has not been put forward.’
The dispute in the main proceedings and the questions referred for a preliminary ruling
Ms Nikolajeva is the proprietor of the EU word mark HolzProf. The application for registration of that mark was filed on 24 April 2010 and then published on 31 May 2010. The mark was registered on 14 September 2010 under number CTM 00905381 and the registration was published on 16 September 2010.
On 24 April 2010 Ms Nikolajeva entered into a licence agreement under which she granted Holz Prof OÜ the right to use her trade mark in return for payment of a monthly fee of EUR 1278.
Alleging that Multi Protect had used her trade mark unlawfully in the period from 3 May 2010 to 28 October 2011, in particular by using a sign identical to that mark as a ‘hidden keyword’ on a website accessible through the internet, Ms Nikolajeva brought proceedings against that company before the Harju Maakohus (Harju District Court, Estonia).
Ms Nikolajeva put forward three heads of claim before the referring court.
First, she applied for a declaration that an act of infringement, constituted by Multi Protect’s unlawful use of her mark, had occurred, submitting that that use was contrary to Article 9(1)(a) and (2)(d) of Regulation No 207/2009.
Secondly, she pleaded unjust enrichment linked to that infringement, claiming payment of EUR 22791 in respect of restitution of the advantage improperly obtained by means of the alleged infringement, a sum calculated by multiplying the duration of the infringement, that is to say, a period totalling 17 months and 25 days, by the amount of the monthly fee set in the licence agreement.
Thirdly, she applied for compensation for the non-material harm which she claimed to have suffered, in an amount to be set by the court hearing the case. In this respect, she pleaded in particular that the bringing of the matter before the referring court and the institution of criminal proceedings on account of the same acts of infringement caused her mental suffering. She stated that on account of those acts the state of her health deteriorated and the dispute in question had adverse effects on business relationships.
The referring court considers that, in the main proceedings, the question arises, in the first place, whether the first sentence of Article 102(1) of Regulation No 207/2009 must be interpreted as meaning that, as an EU trade mark court, it is required to issue an order prohibiting acts of infringement from being proceeded with although, in her action, the claimant has not requested that such a prohibition be ordered and also has not pleaded an infringement of the exclusive right conferred by her trade mark after 28 October 2011, but has merely applied for a declaration that acts of infringement occurred during a period before that date.
It states in this regard that under the applicable national law, in particular the principle, set out in Paragraph 4(2) of the Code of Civil Procedure, that the subject matter of proceedings is determined by the parties and the principle of
ne ultra petita
laid down in Paragraph 439 of that code, a national court can issue an order such as that referred to in the first sentence of Article 102(1) of Regulation No 207/2009 only if an application seeking such an order has been made to it.
Referring to the judgment of 14 December 2006 in Nokia (
C‑316/05
,
EU:C:2006:789
), the referring court considers that the question may also arise whether the fact that the applicant in the main proceedings has not applied for an order prohibiting the infringement from being proceeded with may constitute a ‘special reason’ within the meaning of the first sentence of Article 102(1) of Regulation No 207/2009 which would justify it being able to uphold her first head of claim without having to issue an order laying down that prohibition.
In the second place, the referring court raises the issue of the scope of the concept of ‘reasonable compensation’ referred to in the second sentence of Article 9(3) of Regulation No 207/2009, in particular whether such compensation may be obtained in respect of acts occurring before publication of an application for registration of an EU trade mark and whether such compensation is intended to make good all the harm suffered by the proprietor of the mark concerned, including non-material harm.
In those circumstances, the Harju Maakohus (Harju District Court) decided to stay proceedings and refer the following questions to the Court of Justice for a preliminary ruling:
‘1.
Is an EU trade mark court required to issue the order provided for in Article 102(1) of Regulation No 207/2009 if the applicant does not seek such an order in his claims and the parties do not allege that the defendant has infringed or threatened to infringe an EU trade mark after a specific date in the past, or does failure to make an application to that effect and to refer to this fact represent a “special reason” within the meaning of the first sentence of this provision?
2.
Is Article 9(3) of Regulation No 207/2009 to be interpreted as meaning that the proprietor of an EU trade mark may only demand reasonable compensation from a third party on the basis of the second sentence of Article 9(3) of Regulation No 207/2009 for use of a sign identical with the trade mark in the period from the publication of the application for registration of the trade mark until the publication of the registration of the trade mark, but not compensation for the normal value of what has been gained as a result of the infringement and for damage, and that there is also no right to reasonable compensation for the period prior to publication of the application for registration of the trade mark?
3.
What type of costs and other forms of compensation are included in reasonable compensation under the second sentence of Article 9(3) of Regulation No 207/2009, and can this also encompass in certain circumstances (and if so, in which circumstances) compensation for non-material harm caused to the proprietor of the trade mark?’
Consideration of the questions referred
Question 1
By its first question, the referring court asks, in essence, whether Article 102(1) of Regulation No 207/2009 must be interpreted as requiring an EU trade mark court to issue an order prohibiting a third party from proceeding with acts of infringement even though the proprietor of the trade mark has not applied for such an order before that court.
The referring court observes that, pursuant to certain principles of national law on the conduct of civil proceedings, in particular the principle that the subject matter of proceedings is determined by the parties and the principle of
ne ultra petita
, laid down in Paragraphs 4, 5 and 439 of the Code of Civil Procedure, it is prohibited from issuing an order such as that referred to in Article 102(1) of Regulation No 207/2009 if one has not been applied for before it.
It should be recalled that Article 101(3) of Regulation No 207/2009 states that, unless otherwise provided in that regulation, an EU trade mark court is to apply the rules of procedure governing the same type of action relating to a national trade mark in the Member State in which the court is located.
Since Regulation No 207/2009 does not provide otherwise, it does not preclude application of the principle that the subject matter of proceedings is determined by the parties and of the principle of
ne ultra petita
.
Therefore, Article 102(1) of Regulation No 207/2009 does not preclude an EU trade mark court from refraining, pursuant to those principles of national procedural law, from issuing an order which prohibits a third party from proceeding with acts of infringement on the ground that the proprietor of the trade mark concerned has not applied for such an order.
As the absence of an obligation to issue an order referred to in Article 102(1) of Regulation No 207/2009 therefore follows from the application, which the regulation does not preclude, of rules of national procedural law, there is no need to examine whether that absence of an obligation is justified on the basis that there is a ‘special reason’ within the meaning of that provision.
In any event, the fact that, by his action before the EU trade mark court, the proprietor of an EU trade mark has merely applied for a declaration that an act of infringement has occurred, but has not applied for an order that it cease, cannot be classified as a ‘special reason’ within the meaning of Article 102(1) of Regulation No 207/2009.
That term relates only to exceptional situations in which, in the light of the specific features of the conduct alleged against the third party, in particular the fact that it is impossible for him to proceed with the acts alleged against him which have infringed or threaten to infringe the EU trade mark, such a court is not required to issue an order prohibiting a third party from proceeding with such acts, although an application to that end has been made by the proprietor of the mark (see, to this effect, judgment of 14 December 2006 in Nokia,
C‑316/05
,
EU:C:2006:789
, paragraph
).
In the light of the foregoing considerations, the answer to the first question is that Article 102(1) of Regulation No 207/2009 must be interpreted as not precluding an EU trade mark court from refraining, pursuant to certain principles of national procedural law, from issuing an order which prohibits a third party from proceeding with acts of infringement on the ground that the proprietor of the trade mark concerned has not applied for such an order before that court.
Questions 2 and 3
By its second and third questions, which it is appropriate to examine together, the referring court asks, in essence, first, whether the second sentence of Article 9(3) of Regulation No 207/2009 must be interpreted as precluding the proprietor of an EU trade mark from being able to claim compensation in respect of acts of third parties occurring before publication of the application for registration of the trade mark concerned and, secondly, whether, in the case of acts of third parties occurring after publication of the application for registration of that mark, but before publication of its registration, the concept of ‘reasonable compensation’ in that provision means damages intended to compensate for all the harm suffered by that proprietor, including recovery of the usual value derived by the third party from use of the mark and compensation for the non-material harm suffered.
Under the first sentence of Article 9(3) of Regulation No 207/2009, the rights conferred by an EU trade mark are to prevail against third parties from the date of publication of registration of the trade mark concerned.
It follows that the exclusive right which the EU trade mark confers on its proprietor, enabling him, in particular, to prevent third parties from using the mark concerned in infringement actions pursuant to Article 9(1) and (2) of Regulation No 207/2009, can relate only to acts of third parties occurring after publication of registration of that mark.
However, in order to grant applicants for registration of a trade mark a degree of protection in the period between the date of publication of the application — the date from which the application is deemed to be known to third parties — and the date of publication of the mark’s registration, the second sentence of Article 9(3) of Regulation No 207/2009 lays down a right to ‘reasonable compensation’ in respect of acts having taken place during that period which, had they occurred after the date of registration of the mark, would have been prohibited.
That protection can be explained by the body of economic rights which Regulation No 207/2009 attaches to an application for registration of an EU trade mark.
Indeed, under Article 24 of Regulation No 207/2009, which is in Section 4, headed ‘EU trade marks as objects of property’, applications for registration of EU trade marks can be the subject of various types of legal acts, such as a transfer, the creation of rights
in rem
, or licences, which possess the common feature that their purpose or effect is to create or transfer a right in respect of the trade mark concerned (see, to this effect, judgment of 4 February 2016 in Hassan,
C‑163/15
,
EU:C:2016:71
, paragraph
).
In the present instance, the application for registration of the trade mark at issue in the main proceedings was the subject matter of a licence as soon as it was filed.
The intrinsic economic value of an application for registration of an EU trade mark also stems from other rights attaching to such an application. Thus, by virtue of Regulation No 207/2009 the applicant enjoys in principle a right of priority, from the date on which his application for registration of a mark is filed, over applications filed subsequently.
Furthermore, such considerations relating to the body of economic rights that attach to an application for registration of a trade mark have in particular led the European Court of Human Rights to hold that, in the light of the circumstances of the case considered as a whole, such an application was capable of constituting a substantive interest protected under the fundamental right to property laid down in Article 1 of Protocol No 1 to the European Convention for the Protection of Human Rights and Fundamental Freedoms, signed in Rome on 4 November 1950 (see, to this effect, ECtHR, 11 January 2007,
Anheuser-Busch Inc. v. Portugal
, CE:ECHR:2007:0111JUD007304901, §§ 73 to 78).
In the light of those considerations, it must be held that, since the second sentence of Article 9(3) of Regulation No 207/2009 contains a strictly circumscribed exception to the rule that an EU trade mark does not prevail before publication of its registration, no compensation can be claimed under that provision in respect of acts which occurred before publication of the application for registration of such a mark.
Also, as the second sentence of Article 9(3) of Regulation No 207/2009 makes no express reference to the law of the Member States for the purpose of determining its meaning and scope, it follows, in accordance with the Court’s settled case-law, that the concept of ‘reasonable compensation’ in that provision must normally be given an autonomous and uniform interpretation, having regard to the context of that provision and the objective pursued by the legislation concerned (see, by analogy, judgment of 14 December 2006 in Nokia,
C‑316/05
,
EU:C:2006:789
, paragraph
and the case-law cited).
For the purposes of that interpretation, account should be taken, as the referring court has also observed, of the fact that the protection taking the form of ‘reasonable compensation’, within the meaning of the second sentence of Article 9(3) of Regulation No 207/2009, in respect of the acts referred to in that provision must, by its nature, be more limited than the protection enjoyed by the proprietor of a trade mark for acts occurring after the date of its registration, since the interest to be protected in respect of an application for registration of a mark falls short of the interest to be protected which the mark must possess as a result of its registration.
The acts referred to in the second sentence of Article 9(3) of Regulation No 207/2009 occur at a time when it is not yet certain that the trade mark whose registration has been applied for will in fact be registered, since absolute or relative grounds for refusal of registration may still preclude this in whole or in part.
Thus, the rights conferred by an application for registration of an EU trade mark possess, before registration of the mark concerned, what can be described as a ‘conditional’ nature.
That conditional nature is indeed clear from the third sentence of Article 9(3) of Regulation No 207/2009, since it provides that actions founded on the second sentence of Article 9(3) cannot be brought before an EU trade mark court until after the registration of the trade mark concerned has been published.
It follows that the ‘reasonable compensation’ that may be claimed in an action founded on the second sentence of Article 9(3) of Regulation No 207/2009 must be smaller in scope than the damages which the proprietor of an EU trade mark may claim in respect of the harm caused by an act of infringement.
The distinction between these two types of actions is also clear from the list, in Article 96 of Regulation No 207/2009, of the various areas of exclusive jurisdiction of EU trade mark courts, in that Article 96 mentions separately, in (a), ‘infringement actions’ and, in (c), ‘actions brought as a result of acts referred to in Article 9(3), second sentence’, of the regulation.
In addition, since Regulation No 207/2009 does not contain rules relating to the damages that may be claimed by the proprietor of an EU trade mark for acts of infringement, it follows from Article 101(2) of the regulation that, in principle, an EU trade mark court is to apply its national law, including its private international law, on the matter. It is apparent, furthermore, from Article 14(2) that, in particular, the regulation does not preclude the complementary application of national law relating to infringement and, in particular, national law relating to civil liability.
In this context, Article 13 of Directive 2004/48 lays down certain rules which concern damages intended to compensate for the harm caused by acts of infringement, and which differ according to whether or not the third party must be considered to have knowingly — or with reasonable grounds to know — engaged in an infringing activity.
Thus, Article 13(1) of Directive 2004/48 prescribes compensation which is in principle full compensation, for the harm actually suffered, which may include ‘moral prejudice’, in the event of acts of infringement committed knowingly, whereas Article 13(2) permits only the recovery of profits or the payment of damages, which may be pre-established, where the acts of infringement have not been committed knowingly.
Whilst those provisions apply, in themselves, only to acts of infringement and therefore to acts which have occurred after publication of the registration of the trade mark concerned and not to acts before its publication, such as those referred to in the second sentence of Article 9(3) of Regulation No 207/2009, it may, however, be inferred from them, as the Advocate General has, in essence, also observed in point 51 of his Opinion, that the sum payable by way of ‘reasonable compensation’ cannot exceed the reduced compensation provided for in Article 13(2) of Directive 2004/48.
Since the second sentence of Article 9(3) of Regulation No 207/2009 seeks to attach conditional rights to a trade mark from publication of the application for its registration and even before publication of its registration, the ‘reasonable compensation’, within the meaning of that provision, must have a narrower scope than the damages which may be claimed by the proprietor of an EU trade mark for acts of infringement occurring after publication of the registration of that mark and which are intended, in principle, to ensure full compensation for the harm actually suffered, which may, as the case may be, include moral prejudice.
For the purpose of determining ‘reasonable compensation’, within the meaning of the second sentence of Article 9(3) of Regulation No 207/2009, it is therefore appropriate to apply the criterion relating to the recovery of profits and to exclude from that compensation redress for the wider harm that the proprietor of the trade mark concerned may have suffered on account of its use, which may include, in particular, moral prejudice.
The criterion regarding the recovery of profits, in that it relates to recovery of the profits unfairly derived by third parties from use of the trade mark concerned during the period referred to in the second sentence of Article 9(3) of Regulation No 207/2009, falls within the scope of the objective pursued by that provision, which consists in preventing third parties from improperly benefiting from the intrinsic economic value constituted by the application for registration of a trade mark, when they are deemed to have had knowledge of that application as a result of its publication.
In the light of all the foregoing considerations, the answer to the second and third questions is that the second sentence of Article 9(3) of Regulation No 207/2009 must be interpreted as precluding the proprietor of an EU trade mark from being able to claim compensation in respect of acts of third parties occurring before publication of an application for registration of a trade mark. In the case of acts of third parties committed during the period after publication of the application for registration of the mark concerned but before publication of its registration, the concept of ‘reasonable compensation’ in that provision refers to recovery of the profits actually derived by third parties from use of the mark during that period. On the other hand, that concept of ‘reasonable compensation’ rules out compensation for the wider harm which the proprietor of the mark may have suffered, including, as the case may be, moral prejudice.
Costs
Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the referring court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.

On those grounds, the Court (Seventh Chamber) hereby rules:

1.
Article 102(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark must be interpreted as not precluding an EU trade mark court from refraining, pursuant to certain principles of national procedural law, from issuing an order which prohibits a third party from proceeding with acts of infringement on the ground that the proprietor of the trade mark concerned has not applied for such an order before that court.

2.
The second sentence of Article 9(3) of Regulation No 207/2009 must be interpreted as precluding the proprietor of an EU trade mark from being able to claim compensation in respect of acts of third parties occurring before publication of an application for registration of a trade mark. In the case of acts of third parties committed during the period after publication of the application for registration of the mark concerned but before publication of its registration, the concept of ‘reasonable compensation’ in that provision refers to recovery of the profits actually derived by third parties from use of the mark during that period. On the other hand, that concept of ‘reasonable compensation’ rules out compensation for the wider harm which the proprietor of the mark may have suffered, including, as the case may be, moral prejudice.

[Signatures]
(
*1
)	Language of the case: Estonian.