Judgment — ECLI:EU:C:2016:998
Date: 2016-12-21
Language of the case: Swedish
Court formation: Second Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Reference for a preliminary ruling
Origin: Sweden

Summary — Judgment of the Court (Second Chamber), 21 December 2016 EU trade mark — Effects of the EU trade mark — Rights conferred by a mark — Right to prohibit the use of a mark — Use of an identical or similar sign covering identical or similar goods or services — Extent of the exclusive right granted to the proprietor — Period of five years following registration (Council Regulation No 207/2009, Arts 9(1)(b), 15(1) and 51(1)(a) and (2)) Article 9(1)(b) of Regulation No 207/2009 on the EU trade mark, read in conjunction with Articles 15(1) and 51(1)(a) of that regulation, must be interpreted as meaning that, during the period of five years following registration of an EU trade mark, its proprietor may, if there is a likelihood of confusion, prevent third parties from using in the course of trade a sign identical or similar to his mark in respect of all goods and services identical or similar to those for which that mark has been registered without having to demonstrate genuine use of that mark in respect of those goods or services. It is apparent from the wording and purpose of Article 15(1) and Article 51(1)(a) and (2) of Regulation No 207/2009 that, until the period of five years following registration of the EU trade mark has expired, the rights of the proprietor cannot be declared to be revoked in respect of either some or all of the goods or services for which the mark is registered. Those provisions thus confer on the proprietor a grace period for beginning genuine use of his mark, during which he may rely on the exclusive rights which the mark confers, pursuant to Article 9(1) of the regulation, in respect of all those goods and services, without having to demonstrate such use. Therefore, in determining, under Article 9(1)(b) of Regulation No 207/2009, whether the goods or services of the alleged infringer are identical or similar to the goods or services covered by the EU trade mark at issue, the extent of the exclusive right conferred by virtue of that provision should be assessed, during the period of five years following registration of the EU trade mark, by having regard to the goods and services as covered by the mark’s registration, and not in relation to the use that the proprietor has been able to make of the mark during that period. (see paras 26, 27, 29, operative part)