Judgment;Summary — ECLI:EU:C:2022:174
Date: 2022-03-10
Language of the case: German
Court formation: Tenth Chamber
Subject matter: Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Germany

Summary C-183/21 – 1 
Case C-183/21 
Summary of the request for a preliminary ruling pursuant to Article 98(1) of 
the Rules of Procedure of the Court of Justice 
Date lodged: 
23 March 2021 
Referring court: 
Landgericht Saarbrücken (Germany) 
Date of the decision to refer: 
4 March 2021 
Applicant: 
Maxxus Group GmbH & Co. KG 
Defendant: 
Globus Holding GmbH & Co. KG 
  
Subject matter of the main proceedings 
Trade Mark Directive –Burden of raising and presenting an issue and burden of 
proof 
Subject matter and legal basis of the request 
Interpretation of EU law, Article 267 TFEU 
Question referred for a preliminary ruling 
Is EU law, in particular with regard to the Trade Mark Directive(s), that is to say, 
Directive 2008/95/EC of the European Parliament and of the Council of 
22 October 2008 to approximate the laws of the Member States relating to trade 
marks (OJ L 299, 8.11.2008, p. 25), in particular in Article 12, and 
EN 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-183/21 
 
2  
Directive (EU) 2015/2436 of the European Parliament and of the Council of 
16 December 2015 to approximate the laws of the Member States relating to trade 
marks (OJ 2015 L 336, p. 16), in particular in Articles 16, 17 and 19, 
to be interpreted as meaning that the effet utile of those provisions prohibits an 
interpretation of national procedural law which 
(1) imposes on the applicant in civil proceedings for cancellation of a national 
registered trade mark on grounds of revocation for non-use a burden of raising and 
presenting an issue, as distinguished from the burden of proof; and 
(2) requires the applicant, in the context of that burden of raising and presenting 
an issue, 
a. to make, in such proceedings, substantiated submissions regarding the 
defendant’s non-use of the trade mark, to the extent that it is possible for the 
applicant to do so; and 
b. to carry out, for that purpose, its own research into the market, in a manner 
which is appropriate to the request for cancellation and to the specific nature of 
the trade mark concerned. 
Provisions of EU law relied on 
Directive (EU) 2015/2436 of the European Parliament and of the Council of 
16 December 2015 to approximate the laws of the Member States relating to trade 
marks (‘Trade Mark Directive’), in particular Articles 16, 17, 19, 44 and 46 
Provisions of national law relied on 
Zivilprozessordnung (Code of civil procedure, ‘the ZPO’), Paragraph 178 
Summary of the facts and procedure 
1 The applicant seeks the cancellation of two of the defendant’s German trade 
marks on grounds of revocation for non-use. The applicant sells sports apparatus 
and equipment, massage plates, massage chairs and barbecues. It is registered as 
the proprietor of the German trade mark 302017108053 ‘MAXXUS’ and the EU 
trade mark 17673641 ‘MAXXUS’. 
2 The defendant is the parent company of Globus-Gruppe, St. Wendel. It consists of 
various companies that operate, on the one hand, 46 large-scale self-service 
hypermarkets selling both food and non-food items, and, on the other hand, 
beverage, DIY and electrical stores and other specialist stores throughout 
Germany. The defendant allows the group companies to use the trade marks that it 
MAXXUS GROUP 
 
3 
holds. The group achieves appreciable online sales, at least in the electrical and 
DIY sectors. 
3 The defendant has been registered in the trade mark register since July 1996 as the 
proprietor of the German word mark 395 35 217 ‘MAXUS’ for a large number of 
goods in Classes 33, 1-9, 11-32 and 34. The grace period for making use of the 
trade mark expired on 30 October 2005. The defendant has also been registered, 
since May 1996, as the proprietor of the German word/figurative mark 395 
35 216, depicted below, containing the text ‘MAXUS’ and a globe symbol, in 
respect of Classes 20, 1-9, 11-19 and 21-34: 
 
4 The defendant initially filed a notice of opposition in the registration procedure for 
the applicant’s ‘MAXXUS’ trade marks. On 2 May 2018, the defendant filed a 
notice of opposition against the applicant’s EU trade mark No 17673641 
‘MAXXUS’. The opposition was based, inter alia, on the word mark 395 35 217 
‘MAXUS’. Against that opposition, the applicant argued that the defendant had 
not used the trade mark ‘MAXUS’ in a manner that preserved its rights. The 
defendant withdrew the objection on 5 August 2019. Likewise on the basis of that 
‘MAXUS’ word mark, the defendant filed a notice of opposition against the 
applicant’s German trade mark 302017108053 ‘MAXXUS’ on 12 February 2018. 
The defendant also withdrew that opposition. 
5 On 29 July 2019, the applicant filed an application with the German Patent- und 
Markenamt (Patent and Trade Mark Office) for cancellation of each of the two 
trade marks at issue on grounds of revocation. The defendant objected to the 
cancellations by letter of 26 August 2019 in each case.  
6 The defendant used at least the ‘MAXUS’ word mark as a ‘white label’ for 
various goods and chose the following form for that purpose: 
 
7 The extent of that use and the last relevant point in time are in dispute. The 
applicant claims that, over the last five years, the defendant has not used the trade 
marks registered in its favour in a manner that preserves its rights. 
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8 A Google search for ‘MAXUS’ carried out by the applicant did not reveal any 
evidence of use of the trade marks at issue in a manner that preserves rights. 
According to the applicant, there is a section entitled ‘Private-label brands’ on the 
website www.globus.de, which is operated for the defendant’s group of 
companies. The following designations are listed there: ‘korrekt’, ‘Globus’, 
‘Globus Gold’, ‘naturell’ and ‘Jeden Tag’. The trade marks at issue are not listed. 
The applicant submits that if the term ‘MAXUS’ is entered in the website’s 
internal search bar in the section ‘product range/catalogue’, it displays eight 
offerings, two of which are irrelevant and six of which concern cleaning cloths. 
However, neither of the trade marks at issue are on the cleaning cloths or their 
packaging. It is only in the text of the offering that the word ‘MAXUS’ appears. If 
the designation ‘MAXUS’ is entered in the search bar of the homepage 
www.globus.de, two hits are displayed. Both refer to ‘MAXUS Getränkemarkt’ 
[MAXUS beverage distributor], operated by Maxus GC Freilassing GmbH & Co. 
KG. However, according to its website, that company does not use the designation 
‘MAXUS’ as a trade mark for its own beverages, but only as a company sign or 
trade mark for beverage trading services. A private detective agency verified that 
none of the defendant’s private-label products have been sold under the 
designations at issue in that beverage store in Freilassing. 
9 The applicant claims that, over the last five years, the defendant has not used the 
trade marks registered in its favour in a manner that preserves its rights. The 
defendant bears the burden of raising and presenting an issue and the burden of 
proof. This is also apparent from the Trade Mark Directive, as amended. 
10 The applicant requests, first, that the defendant be ordered to consent to the 
cancellation of its word mark ‘MAXUS’, registered at the German Patent and 
Trade Mark Office under number 395 35 217, in respect of all the goods covered, 
and, second, that the defendant be ordered to consent to the cancellation of its 
word/figurative mark ‘MAXUS’, registered with the German Patent and Trade 
Mark Office under number 395 35 216, in respect of all the goods covered. 
11 The defendant contends that the action should be dismissed. It claims that there 
has been use preserving its right and takes the view that the applicant’s 
submission is not sufficient to establish a secondary burden of raising and 
presenting the issues concerned. 
12 According to the defendant, the trade mark ‘MAXUS’ is used, with its consent, in 
the self-service hypermarkets belonging to Globus-Gruppe in order to designate 
the following groups of goods in the standard range: pet accessories, household 
goods, stationery, toys, sporting goods, automobile accessories, textile goods. The 
defendant submits that such goods bearing the trade mark designation have been 
sold, with its consent, in the self-service hypermarkets belonging to Globus-
Gruppe in Germany and also as export goods throughout the relevant period, 
which consists of the last five years up to the point at which the present 
proceedings were commended and also up to the present day. Furthermore, the 
MAXXUS GROUP 
 
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trade mark is used on a temporary basis for promotions, such as fan merchandise 
for football events. 
13 The defendant submits exemplary packaging samples and photographs of shelves, 
which are intended to illustrate the use of the word mark ‘MAXUS’ over the last 
5 years. Furthermore, it submits excerpts from the inventory management system 
and a list from the private-label area. It continues to adopt its submissions from 
the opposition proceedings and, to that end, submits the written observations 
presenting the use made, providing detailed information and further proof. 
14 It also submits that it could provide further proof of use and is willing to make the 
effort required to do so. It would involve a significant amount of effort, however. 
Relevant provisions/case-law 
15 The present Chamber cites recitals 31, 32 and 42 as well as Articles 16, 17, 19, 44 
and 46 of the new Trade Mark Directive; there does not appear to have been any 
change in the law with regard to the point at issue. 
16 According to the case-law of the Court of Justice of the European Union, the 
burden of proof in respect of non-use in an action for cancellation rests with the 
trade mark proprietor. As regards EU trade marks, the Chamber refers in that 
connection to paragraphs 52 to 64 of the judgment in Case C-610/11 P, 
Centrotherm. That case-law on the old Trade Mark Directive has been extended to 
include national trade marks as well, as is clear from paragraphs 62 to 74 of the 
judgment in Joined Cases C-217/13 and C-218/13, Oberbank AG and Others. 
Finally, as is apparent from paragraphs 73 to 82 of the judgment in Joined Cases 
C-720/18 and C-721/18, Ferrari SpA, the Court has held that the burden of proof 
also rests with the trade mark proprietor in civil invalidity proceedings such as 
those in the present case. 
17 Under German law, pursuant to Paragraph 55(1), second sentence, point 1, of the 
Markengesetz (Law on trade marks; ‘the MarkenG’), any person may file an 
action for a declaration of revocation under Paragraph 49 of the MarkenG in so far 
as he or she invokes non-use of the trade mark. In accordance with 
Paragraph 49(1) of the MarkenG, a trade mark is revoked, thereby giving rise to a 
right to have that trade mark declared invalid, if it has not been put to genuine use 
within the meaning of Paragraph 26 of the MarkenG within a continuous period of 
five years; one single genuine use is sufficient to render the opponent’s right to 
have the trade mark declared invalid ineffective in respect of the product groups 
that are in use. 
18 In accordance with the case-law of the Bundesgerichtshof (Federal Court of 
Justice), the burden of raising and presenting an issue and the burden of proof in 
civil invalidity actions (were) structured in such a way that the applicant must first 
demonstrate the non-use in a substantiated manner. To that end, it was recognised 
that the applicant must, by virtue of the burden of raising and presenting an issue, 
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itself conduct an adequate investigation using its own resources in order to clarify 
whether or not the other party uses a trade mark in a manner that preserves its 
rights. The trade mark proprietor could then be subject to a secondary burden of 
raising and presenting relevant issues, because the party attacking the trade mark 
generally cannot have any insight into the internal business processes of the other 
party. The situation was as follows: ‘The burden of raising and presenting an issue 
and the burden of proof in respect of the conditions for cancellation action rest 
with the applicant. However, the defendant in a cancellation action may be subject 
to a procedural duty of explanation under Paragraph 242 of the Bürgerliches 
Gesetzbuch (Civil Code, ‘the BGB’) in accordance with the principle of good 
faith, which also applies in procedural law. This presupposes that the applicant for 
cancellation does not have precise knowledge of the circumstances surrounding 
the use of the trade mark and also does not have the possibility of clarifying the 
facts on its own initiative.’ 
Grounds for the request 
19 The present request for a preliminary ruling concerns the interpretation of the 
Trade Mark Directive(s) in relation to national invalidity proceedings concerning 
non-use in respect of national trade marks. By its decision in Joined Cases 
C-720/18 and C-721/18, the Court placed the burden of proof in those proceedings 
on the trade mark proprietor. 
20 The present Chamber takes the view that, in the light of that decision, the 
described case-law of the Federal Court of Justice is no longer tenable with regard 
to the burden of proof. However, the question of whether the applicant can 
continue to bear the burden of raising and presenting an issue in national law 
remains open. The Chamber takes the view that this is the case. 
21 In that respect, it should in principle be the case that procedural law – including in 
accordance with the Trade Mark Directive – should fall within the regulatory 
autonomy of the Member States. This is confirmed by recital 42 of the directive. 
However, that principle is limited by the general rules of EU law by virtue of the 
prohibition of discrimination and the principle of effectiveness. 
22 While the principle of equal treatment is not affected in the present case, the 
question arises as to whether the imposition of the burden of raising and 
presenting an issue on the applicant would impair the effet utile of the Trade Mark 
Directive. 
23 In German law, a distinction is made between the concepts of the burden of 
raising and presenting an issue (Darlegungslast) and the burden of proof 
(Beweislast). 
24 The duty to raise and present an issue compels the party to present the issues 
concerned in as concrete a manner as possible. Any person who bears the burden 
of raising and presenting an issue under Paragraph 138 of the Zivilprozessordnung 
MAXXUS GROUP 
 
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(Code of civil procedure, ‘the ZPO’) will be unsuccessful in the proceedings if he 
or she does not discharge that burden. In particular, German procedural law has 
also developed a secondary burden of raising and presenting issues. It is intended 
to force both parties to present the issues concerned in a manner that is actually 
possible for them. In that respect, the case-law also recognises duties to conduct 
investigations within the party’s own sphere of influence. 
25 This must be distinguished from the question of who bears the burden of proof if 
both parties present their view of the matter in a sufficiently concrete manner. If, 
after the taking of evidence, the court does not know whether, on balance, it is 
able to accord credibility to the applicant’s evidence in spite of the defendant’s 
counter-evidence, the party bearing the burden of proof is unsuccessful (‘non 
liquet’). 
26 In principle, the burden of proof and the burden of raising and presenting an issue 
are to be separated. German law provides various examples of how the burden of 
raising and presenting an issue and the burden of proof vary, and it differentiates 
the burden of raising and presenting an issue in such a way that each party must 
present the facts that are known to it or that can be researched with reasonable 
effort. If one of the two parties does not discharge its burden of raising and 
presenting an issue, it loses the case. If both parties present the issues in a 
sufficiently concrete manner, the court collects and assesses the evidence adduced. 
If the court is unable to form a conviction from the evidence gathered, the party 
bearing the burden of proof is unsuccessful. 
27 The submission at issue concerns only the burden of raising and presenting an 
issue, not the burden of proof. 
28 In the present case, the only question is whether it is possible under EU law to 
impose on the applicant in invalidity proceedings concerning non-use conducted 
under national trade mark law an original burden of raising and presenting an 
issue – or at least a secondary such burden given that the defendant has already 
made quite a detailed submission in relation to use. 
29 In the opinion of the present Chamber, the Trade Mark Directive does not contain 
any rules on the burden of raising and presenting an issue. It takes the view that, in 
particular, it does not follow from the Trade Mark Directive, at least not 
necessarily in the sense of the principle of effectiveness, that no requirements 
whatsoever can be imposed on the applicant in invalidity proceedings with regard 
to the substantiation of its action. 
30 The Court of Justice of the European Union justifies the view of the burden of 
proof, which is not expressly regulated in the Trade Mark Directive, by pointing 
to an analogy to the European Union Trade Mark Regulation and, moreover, to 
the argument that the question of the burden of proof must be regulated in the 
same way in all Member States in order not to undermine the level of protection 
resulting from the Trade Mark Directive. The trade mark proprietor’s burden of 
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proof arises from a principle which ‘is in reality merely an application of common 
sense and requirements of procedural efficacy.’ 
31 In the preliminary view taken by the present Chamber, neither argument concerns 
the burden of raising and presenting an issue: 
32 the Chamber takes the view that common sense and procedural efficiency, the two 
reasons underpinning the case-law of Court, require that the burden of raising and 
presenting an issue continue to be interpreted in a manner that balances interests, 
in accordance with the case-law of the Federal Court of Justice presented above. 
33 This is because the recognised interests of both sides must be weighed against 
each other. Therefore, the applicant should first make the effort itself to check, as 
far as it is possible and reasonable for it to do so, whether or not the defendant 
uses the trade mark concerned. Only after such research and the corresponding 
substantiated submission would it appear necessary for the defendant to disclose 
its use in a comprehensive manner. 
34 Otherwise, any party – procedural law does not require a specific legal interest for 
invalidity actions – could force any trade mark proprietor to disclose the use of its 
trade mark. Under both German law and the directives, ‘any person’ may bring a 
cancellation action. The risk of abuse of that possibility to bring an action is 
therefore great if the applicant is not required, in a first step, to make any 
submissions other than the sentence ‘The defendant does not make use of its trade 
marks’. 
35 A considerable effort is imposed on the defendant trade mark proprietor, namely 
the task of researching all instances of use made in the last 5 years in all areas in 
which it uses the private-label products. 
36 The referring Chamber takes the view that it therefore appears reasonable and 
necessary to require that the applicant itself first assess, in an appropriate manner, 
whether the trade mark proprietor does not actually make any use of the trade 
mark concerned. The Chamber takes the view that, in order to do so, it must carry 
out an assessment appropriate to the specific nature of the trade mark concerned 
and give an account of that assessment in the action. It is only through such 
concrete factual submissions that the applicant triggers the defendant’s burden of 
making a submission. In that respect, it is also recognised that a concrete 
submission by one party requires a concrete response from the other. 
37 The present case illustrates the problem: the defendant operates a chain of 46 
bricks-and-mortar hypermarkets in Germany and, as a full-range supplier, sells a 
variety of ‘non-food’ products. At least according to its submissions and the 
evidence placed in the case file so far, it uses at least the word mark ‘maxus’ as a 
private-label brand for a large number of products in a large number of classes of 
the Nice Agreement. The defendant has only a rudimentary online presence. In the 
proceedings so far, the applicant has been content to conduct a brief Google 
search and look into one hit – a beverage store near Munich. 
MAXXUS GROUP 
 
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38 The Chamber takes the view that the applicant has not thereby discharged its 
burden of raising and presenting an issue. In the case of a trade mark such as that 
at issue in the present case, it would have been possible and reasonable for the 
applicant to inspect at least 2 or 3 of the defendant’s hypermarkets on a random 
basis in order to check the use of the trade marks concerned. This is because the 
trade mark concerned is the defendant’s private-label brand (‘white label’), which 
is suitable for many products, and the defendant is not an online retailer, but rather 
a bricks-and-mortar hypermarket. 
39 The question as to the appropriateness of the scope of the burden of raising and 
presenting an issue can, in the view of the Chamber, be decided only on an 
individual basis by the national court in each individual case. Joined Cases 
C-720/18 and C-721/18, for instance, in which the Court ruled on the burden of 
proof, concerned a trade mark for which the specialist areas and product markets 
were clearly apparent, as was the use of the trade mark on those markets. The 
situation is completely different when it comes to a supermarket’s own private-
label brands (‘white labels’). They may relate to a large number of markets and 
products. 
40 Were the applicant not to have any specific obligations to conduct research and 
make submissions in the sense of the burden of raising and presenting issues, it 
could force the defendant, without having to make any effort, to make a 
substantiated submission on the use of its private label, thereby giving up trade 
secrets and going to great lengths in order to conduct the required research. The 
Chamber takes the view that this could give rise to potential for abuse. 
41 It is true that it is necessary to take account of the fact that invalidity actions are in 
the general interest so as to provide trade marks with exclusive protection only if 
they are also put to use. German law also allows an action for annulment even 
where the applicant does not have a legal interest of its own. Nevertheless, the 
legitimate interests of a trade mark proprietor in not being the target of a ‘shot in 
the dark’ and in being, rather, the subject of legal proceedings only if the applicant 
has also ‘done its homework’ might militate in favour of the attacker being subject 
to a certain requirement to raise and present the relevant issues. 
42 The concept on which the Trade Mark Directive is based also militates in favour 
of that view of the matter: in that respect, Articles 17, 44 and 46 of the directive 
make clear that the defence of non-use can be raised in the proceedings brought by 
the trade mark proprietor which are referred to in those provisions and that the 
trade mark proprietor bears the burden of proof in such proceedings. If a trade 
mark proprietor wishes to defend itself against an infringement, it should therefore 
also bear the original burden of raising and presenting the argument that it is 
actually using the trade mark, if the potential infringer so requests. The situation is 
the same in the proceedings described in Articles 44 and 46 of the Trade Mark 
Directive. The scope of such proceedings is therefore determined by the trade 
mark proprietor in each case. 
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43 The situation is entirely different in civil invalidity proceedings, as proceedings 
brought against the trade mark proprietor: first, those proceedings are not 
regulated by the directive, a circumstance which militates against a limitation of 
the attacker’s burden of raising and presenting an issue. The effet utile of the 
Trade Mark Directive is therefore – e contrario – not affected by the attacker’s 
burden of raising and presenting an issue in civil invalidity proceedings. Second, it 
is the attacker in such cases that determines the scope of the attack on the 
proprietor’s allegedly unused trade mark. Therefore, the present Chamber takes 
the view that, at the least, substantiated and fact-based submissions by the 
applicant are necessary in such a situation in order to prevent the invalidity 
proceedings from becoming completely boundless. This presupposes that the 
attacker conducts a certain, reasonable amount of research before proceedings are 
brought. 
44 Moreover, it should be noted that the directive expressly provides for 
administrative invalidity proceedings before the trade mark office. This facility is 
also guaranteed under German law. The effet utile of the Trade Mark Directive 
does not therefore require that the applicant’s burden of making a submission in 
civil invalidity proceedings, which are neither required nor regulated by the 
directive, be set at zero. 
45 The Court’s second argument, that no different level of protection should arise 
within the scope of the Trade Mark Directive, does not affect the preliminary view 
taken by the present Chamber. This is because, following the judgment in Joined 
Cases C-720/18 and C-721/18, it is clear that a ‘non liquet’ resulted in a decision 
against the trade mark proprietor after evidence had been taken. The possibility to 
make substantiated submissions in the sense of the burden of raising and 
presenting an issue is automatically available to any party willing to conduct the 
required research. If this takes place, the trade mark proprietor must make a full 
submission on the use of its trade mark. If it does so, evidence is taken and, if it is 
deemed to be insufficient, a non-liquet decision is given in favour of the attacker. 
Consequently, the Chamber’s view on the burden of raising and presenting an 
issue does nothing to change the level of protection. 
46 The Chamber would therefore like to know, in its first question, whether the 
applicant can be subject to an obligation to make substantiated submissions in 
invalidity proceedings. By its second question, the Chamber would like to know 
whether the interpretation for which it has a preference on a preliminary basis –
according to which that burden of raising and presenting an issue requires the 
applicant to conduct its own research which is appropriate to the contested trade 
mark – is in conformity with EU law.