Order — ECLI:EU:C:2021:61
Date: 2021-01-21
Language of the case: German
Court formation: Fifth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property;Procedural provisions
Procedure: Reference for a preliminary ruling;Rectification
Origin: Germany

Translation C-607/19 — 1 
Case C-607/19 
Request for a preliminary ruling 
Date lodged: 
12 August 2019 
Referring court: 
Bundesgerichtshof (Germany) 
Date of the decision to refer: 
6 June 2019 
Applicant: 
Husqvarna AB 
Defendant: 
Lidl E-Commerce International GmbH & Co. KG 
  
BUNDESGERICHTSHOF 
(FEDERAL COURT OF JUSTICE) 
ORDER 
I ZR 212/17 
…   
6 June 2019   
…   
in the case of 
Husqvarna AB …, Huskvarna, Sweden, 
applicant, defendant in the counterclaim and appellant on a point 
of law, 
… 
EN 
REQUEST FOR A PRELIMINARY RULING OF 6. 6. 2019 — CASE C-607/19 
 
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v 
Lidl E-Commerce International GmbH & Co. KG […], Neckarsulm, 
defendant, applicant in the counterclaim and respondent in the 
appeal on a point of law, 
… [Or. 2] 
The First Civil Chamber of the Bundesgerichtshof … 
has made the following order: 
I. The proceedings are stayed. 
II. For the purposes of the interpretation of Article 51(1)(a) of Council 
Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade 
mark (OJ L 78 of 24 March 2009, p. 1; ‘CTMR’) and Article 58(1)(a) of 
Regulation (EU) 2017/1001 of 14 June 2017 on the European Union trade 
mark (OJ L 154 of 16 June 2017, p. 1; ‘EUTMR’), the following questions 
are referred to the Court of Justice of the European Union for a preliminary 
ruling: 
1. In the case of a counterclaim seeking a declaration that an EU trade 
mark has lapsed, which was filed prior to the expiry of the period of 
five years of non-use, is the establishment of the date which is decisive 
for the calculation of the period of non-use in the context of the 
application of Article 51(1)(a) CTMR and Article 58(1)(a) EUTMR 
covered by the provisions of the Community Trade Mark Regulation 
and the European Union Trade Mark Regulation? 
2. If Question 1 is to be answered in the affirmative: In the calculation of 
the period of five years of non-use pursuant to Article 51(1)(a) CTMR 
and Article 58(1)(a) EUTMR in the case of a counterclaim, filed prior 
to expiry of the period of five years of non-use, for a declaration that 
[Or. 3] an EU trade mark has lapsed, is account to be taken of the date 
of filing of the counterclaim or of the date of the last hearing in the 
appeal on the merits? 
Grounds: 
1 I. The applicant manufactures apparatus for garden and landscape 
maintenance. In 2006 it purchased Gardena Deutschland GmbH. Since 1968, the 
latter has marketed the ‘Original Gardena System’, a garden-hose system the 
attachment set of which includes an irrigation sprinkler and a quick-action 
coupling for connecting the irrigation sprinkler to the garden hose. 
HUSQVARNA 
 
3 
2 The applicant is the proprietor of the three-dimensional EU trade mark No 456244 
applied for on 31 January 1997 and registered on 26 January 2000 in the colours 
orange-red/grey/light grey in respect of the product ‘irrigation sprinkler’ (the trade 
mark at issue). The graphic representation of that trade mark in the register shows 
an irrigation sprinkler which consists of three parts, namely a connection piece, a 
grip and an end piece. The grip is grey and conical and has a finely grooved 
surface. The end piece is narrower and longer than the grip. It is likewise conical 
and tapers to the front, has slight, elliptical indentations and is dark orange in 
colour. [Or. 4] 
3 The trade mark at issue is graphically represented in the register as follows: 
 
4 The irrigation sprinkler with the article number 941 marketed by the applicant in 
any event until May 2012 corresponds to the trade mark at issue. 
5 The defendant is a company of the Lidl group which is responsible for the online 
product offers of the discounter chain and the operation of the online shop. Since 
the beginning of July 2014 until at least January 2015, the defendant offered in its 
online shop a spiral hose set which consisted of a spiral hose, an irrigation 
sprinkler and a coupling sleeve for a quick-action hose coupling. 
6 The applicant took the view that that offer constituted an infringement of its EU 
trade mark and sought, as against the defendant, an order to desist, a determination 
of its liability to pay compensation and reimbursement of the costs of the warning 
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notice. The defendant requested, by way of a counterclaim, the cancellation of the 
EU trade mark due to its having lapsed. The appellate court upheld the action and 
dismissed the counterclaim. Upon the defendant’s appeal on the merits, the court 
dealing with the appeal on the merits dismissed the action and, in response to the 
counterclaim, declared EU trade mark No 456244 to be revoked as from 31 May 
2017. [Or. 5] 
7 The present Chamber allowed the appeal on a point of law, insofar as the court 
dealing with the appeal on the merits found against the applicant with regard to 
the counterclaim. By its appeal on a point of law, the applicant is seeking the 
restoration of the judgment of the Landgericht (Regional Court), insofar as the 
counterclaim was dismissed therein. 
8 II. The decision in the present case depends on the clarification of the scope 
of Regulation (EC) No 207/2009 on the Community trade mark (‘the Community 
Trade Mark Regulation’, CTMR) and of Regulation (EU) … 2017/1001 on the 
European Union trade mark (‘the European Union Trade Mark Regulation’, 
EUTMR) and on the interpretation of Article 51(1)(a) CTMR and Article 58(1)(a) 
EUTMR. For that reason, prior to a decision on the appeal, the proceedings are to 
be stayed and a preliminary ruling is to be obtained from the Court of Justice of 
the European Union pursuant to the first paragraph, under (b), and the third 
paragraph of Article 267 TFEU. 
9 1. The court dealing with the appeal on the merits considered the 
counterclaim to be well founded, and stated the following in this regard: 
10 The trade mark at issue had to be declared to be revoked with effect from 31 May 
2017. It was not the filing of the counterclaim in September 2015, but the date of 
the conclusion of the last hearing on 24 October 2017 that was decisive for the 
calculation of the continuous period of non-use. Up to that date, the applicant had 
not made genuine use of the trade mark within a continuous period of five years, 
because the irrigation sprinkler with the article number 941 had been sold only up 
to May 2012. 
11 2. In the case in dispute, the first question that arises is whether the 
establishment of the date that is decisive for the calculation of the five-year period 
within the meaning of Article 51(1)(a) CTMR and Article 58(1)(a) EUTMR is 
covered by the Community Trade Mark Regulation and the European Union 
Trade Mark Regulation (first question referred). If that is the case, the question 
then arises as to the decisive date (second question referred). [Or. 6] 
12 (a) Clarification is first required as to whether, in the event of a counterclaim 
for a declaration that an EU trade mark has lapsed, which was filed prior to the 
expiry of the period of five years of non-use, the date which is decisive for the 
calculation of the period of non-use in the context of the application of 
Article 51(1)(a) CTMR and Article 58(1)(a) EUTMR is covered by the provisions 
of the Community Trade Mark Regulation and the European Union Trade Mark 
HUSQVARNA 
 
5 
Regulation. This question is to be asked in respect of both regulations, because the 
Community Trade Mark Regulation firstly applied on the date, considered as 
decisive, of the filing of the counterclaim in September 2015, but this had been 
replaced by the European Union Trade Mark Regulation on the date of the 
conclusion of the hearing before the court dealing with the appeal on the merits on 
24 October 2017. In the opinion of the present Chamber, the regulations 
mentioned do not regulate that date. 
13 (aa) Pursuant to the first sentence of Article 14(1) CTMR and the first sentence 
of Article 17(1) EUTMR, the effects of EU trade marks are to be governed solely 
by the provisions of those regulations. Pursuant to the second sentence of 
Article 14(1) CTMR and the second sentence of Article 17(1) EUTMR, in other 
respects, infringement of an EU trade mark is to be governed by the provisions of 
Chapter X of those regulations. According thereto, the EU trade mark courts must 
apply the provisions of those regulations (Article 101(1) CTMR, Article 129(1) 
EUTMR). According to Article 101(2) CTMR, in the version in force on the date 
of filing of the counterclaim in September 2015, on all matters not covered by the 
Community Trade Mark Regulation, a Community trade mark court is to apply its 
national law, including its private international law. According to Article 129(2) 
EUTMR, on all trade mark matters not covered by that regulation, the relevant EU 
trade mark court is to apply the applicable national law. Both of the last-
mentioned provisions relate to substantive trade mark law not governed by the 
regulations […]. [Or. 7] 
14 With regard to procedural law, Article 14(3), in conjunction with Article 101(3), 
CTMR and Article 17(3), in conjunction with Article 129(3), EUTMR provide 
that, unless otherwise provided for in those regulations, 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 (see Court 
of Justice, judgment of 22 June 2016 — C-280/15, … paragraphs 28 and 29 — 
Nikolajeva v Multi Protect). 
15 (bb) Those regulations do not contain an express stipulation of the date that is 
decisive in the case of a counterclaim for a declaration of revocation for the 
calculation of the period of non-use within the meaning of Article 51(1)(a) CTMR 
and Article 58(1)(a) EUTMR. According to the aforementioned provisions, the 
trade mark is to be declared to be revoked on the basis of a counterclaim in 
infringement proceedings if, within a continuous period of five years, it has not 
been put to genuine use in the European Union in connection with the goods or 
services in respect of which it is registered, and there are no reasons for non-use. 
16 (1) The calculation of the ‘continuous period of five years’ of non-use that is 
decisive for the purpose of revocation is not regulated in the respective first 
clauses of Article 51(1)(a) CTMR and Article 58(1)(a) EUTMR. According to the 
respective second clauses of those provisions, revocation may not be claimed in 
the case where, during the interval between expiry of the five-year period 
mentioned in the first clause of the provisions and filing of the application or 
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counterclaim, genuine use of the trade mark has been started or resumed. 
Therefore, a distinction is made in both clauses between the five-year period that 
is decisive for the revocation and the subsequent filing of the counterclaim, which 
means that, between the end of the five-year period and the filing of the 
counterclaim, there may be a period in which the trade mark is used. It cannot be 
concluded therefrom that the filing of the counterclaim is (likewise) important for 
determining the five-year period that is decisive according to the respective first 
clauses of those provisions. [Or. 8] 
17 (2) Insofar as Article 99(3) CTMR and Article 127(3) EUTMR declare the 
date of the infringement action to be decisive, this expressly applies only to a plea, 
filed against actions pursuant to Article 96(a) and (c) CTMR and Article 124(a) 
and (c) EUTMR, relating to revocation of the EU trade mark submitted otherwise 
than by way of a counterclaim. Article 100 CTMR and Article 128 EUTMR, 
which regulate counterclaims, do not contain any such rule. Accordingly, under 
the second sentence of Article 17 of Directive (EU) 2015/2436 to approximate the 
laws of the Member States relating to trade marks, in the case of non-use as 
defence in infringement proceedings, account is to be taken of the date on which 
an action is brought for the calculation of the five-year period. That directive does 
not contain any statement in respect of the date that is decisive in the case of a 
counterclaim for cancellation. 
18 (3) An express stipulation of the end point of the five-year period is contained 
in Article 47(2) CTMR and Article 47(2) EUTMR in respect of opposition 
proceedings, based on an earlier EU trade mark, against an application for an EU 
trade mark and in Article 57(2) CTMR and Article 64(2) EUTMR in respect of 
proceedings for a declaration of revocation or invalidity before the European 
Union Intellectual Property Office (EUIPO). These provisions, which apply to 
administrative proceedings before the Office, likewise contain no statement 
regarding the calculation date that is decisive in the case of a judicial counterclaim 
for a declaration of revocation. 
19 (cc) In the opinion of the present Chamber, the determination of the date that is 
decisive in the case of a counterclaim for a declaration of revocation for the 
calculation of the period of non-use within the meaning of Article 51(1)(a) CTMR 
and Article 58(1)(a) EUTMR does not fall under those regulations, because this is 
a question of procedural law that is not regulated therein. [Or. 9] 
20 (1) The fact that, under trade mark law harmonised throughout the European 
Union, this is a question of procedural law is supported by recital 9 of Directive 
2008/95/EC to approximate the laws of the Member States relating to trade marks. 
According to that recital, it is up to the Member States to establish the applicable 
rules of procedure in respect of revocation and declaration of invalidity due to 
earlier rights. The fact that Directive (EU) 2015/2436 no longer expressly 
regulates this is probably connected with the introduction, provided for in 
Article 45 thereof, of revocation proceedings before the trade mark offices but, in 
HUSQVARNA 
 
7 
view of judicial revocation proceedings, does not militate against the qualification 
under procedural law of the period calculation … 
21 (2) According to German civil procedural law, the court has to base its 
decision on the arguments submitted up to the conclusion of the final hearing …. 
If revocation is pleaded in the legal proceedings, German trade mark law 
stipulates in the first sentence of Paragraph 25(2) of the Markengesetz (Trade 
Mark Law; MarkenG) that account is to be taken of the lodging of the action when 
calculating the five-year period of use. However, according to the second sentence 
of Paragraph 25(2) MarkenG, if the period of five years of non-use ends 
subsequent to the lodging of the action, account is to be taken of the conclusion of 
the hearing … If the action is lodged by the proprietor of a registered trade mark 
with earlier priority, the provision of the second sentence of Paragraph 55(3) 
MarkenG provides that, in response to a plea by the defendant in respect of the 
issue of non-use, account is to be taken of the period of five years starting from 
the conclusion of the hearing. 
22 As an evidentiary hearing regarding right-maintaining use before the court dealing 
with the appeal on a point of law is excluded, it is, with regard to the revocation of 
a trade mark, according to established case-law of the present Chamber, the last 
hearing before the [Or. 10] court dealing with the appeal on the merits that 
matters … 
23 According to this principle of the ‘shifting period of use’, there may be — as in 
the present case — the revocation of a trade mark which has still been used in a 
right-maintaining manner in the last five years before the action was lodged, but 
has no longer been used in such a manner five years before the date of the last 
hearing before the court dealing with the appeal on the merits. 
24 (b) If the first question referred is to be answered in the affirmative, this raises, 
in the context of interpreting Article 51(1)(a) CTMR and Article 58(1)(a) 
EUTMR, the further question in need of clarification as to whether, when 
calculating the period of five years of non-use pursuant to Article 51(1)(a) CTMR 
and Article 58(1)(a) EUTMR in the case of a counterclaim, filed prior to the 
expiry of the period of five years of non-use, for a declaration of revocation of an 
EU trade mark, account is to be taken of the date of filing of the counterclaim or 
the date of the last hearing in the appeal on the merits. In the opinion of the 
present Chamber, the date of the last hearing in the appeal on the merits should be 
decisive. 
25 (aa) The question referred is material to the decision. The appeal on a point of 
law will be successful if account is to be taken of the filing of the counterclaim in 
September 2015 for the calculation of the period of non-use. In this case, with 
regard to the use of the trade mark at issue through the sale of the irrigation 
sprinkler with the article number 941 up to May 2012, there would be an absence 
of non-use for a continuous period of five years, which would mean that the 
counterclaim would be unfounded. By contrast, the [Or. 11] appeal on a point of 
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law will be unsuccessful if account is to be taken of the date of the last hearing in 
the instance examining the facts for the calculation of the period of five years of 
continuous non-use. The assumption made by the court dealing with the appeal on 
the merits that right-maintaining use of the trade mark at issue had been proven 
only up to May 2012 stood up to the examination for the purposes of appeal on a 
point of law. The court dealing with the appeal on the merits would then, in 
consideration of a most recent right-maintaining use in May 2012, have been right 
to declare the trade mark at issue to be revoked as from 31 May 2017, as the last 
hearing took place on 24 October 2017. 
26 (bb) The date that is decisive for a revocation due to five years of suspension of 
use under Article 58(1)(a) EUTMR and Article 51(1)(a) CTMR is neither clear 
nor already clarified by the case-law of the Court of Justice of the European 
Union. It is in particular not possible to derive clarification of the question 
referred from the judgment of the Court of Justice of the European Union of 
19 April 2018 (C-148/17, … P&C Hamburg v P&C Düsseldorf). According to 
that judgment, Article 14 of Directive 2008/95/EC, read in conjunction with 
Article 34(2) CTMR, must be interpreted as precluding an interpretation of 
national legislation according to which the invalidity or revocation of an earlier 
national mark, the seniority of which is claimed for an EU mark, may be 
established a posteriori only if the conditions for that invalidity or that revocation 
were met, not only on the date on which that earlier national mark was 
surrendered or the date on which it lapsed, but also on the date on which the 
judicial decision making that finding is taken (Court of Justice, … 
paragraph 32 — P&C Hamburg v P&C Düsseldorf). No findings for answering 
the question referred in the case in dispute can be derived from that judgment. The 
present case does not involve the examination of whether the conditions for the 
invalidity or revocation of a national mark had been met on the date on which it 
was surrendered or allowed to lapse (see Court of Justice, … paragraph 26 — 
P&C Hamburg v P&C Düsseldorf). It is instead to be examined whether a trade 
mark that is still in the register has lapsed. [Or. 12] 
27 (cc) Taking account of the date of the conclusion of the hearing in the appeal on 
the merits fulfils the objective mentioned in recital 24 of the European Union 
Trade Mark Regulation, that the granting of trade mark protection is justified only 
in the case of actual use, to a greater extent than taking account of the date of 
filing of the counterclaim. The latter may lead to an infringement action being 
successful and a counterclaim for a declaration of revocation having to be 
dismissed, even though the trade mark at issue merited cancellation at the time of 
the decision. Taking account of the date of the last hearing in the appeal on the 
merits also complies with procedural economy, because the applicant in the 
counterclaim is not directed to a new counterclaim or a cancellation application, 
but a period of five years of non-use has been completed during the dispute. The 
uniformity of the protection of the EU trade mark is not affected in a relevant 
manner by account being taken of the date of the last hearing. 
…