Opinion of the Advocate General — ECLI:EU:C:2016:293
Date: 2016-04-21
Language of the case: Estonian
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Reference for a preliminary ruling
Origin: Estonia

Summary — Judgment of the Court (Seventh Chamber), 22 June 2016 1. EU trade mark — Disputes concerning the infringement and validity of EU trade marks — Penalties in the event of infringement or threatened infringement — Obligations of the EU trade mark courts — Issue of an order prohibiting the defendant from proceeding with acts which have infringed or threaten to infringe an EU trade mark — No application seeking such an order — Concept of ‘special reasons’ for not issuing such an order (Council Regulation No 207/2009, Arts 101(3) and 102(1)) 2. EU trade mark — Effects of the EU trade mark — Rights conferred by the trade mark — Prevailing of rights against a third party only from the date of publication of registration of the trade mark — Exception — Reasonable compensation in respect of acts occurring after the date of publication of an EU trade mark application — Concept of reasonable compensation (Council Regulation No 207/2009, Art. 9(3)) 1. Article 102(1) of Regulation No 207/2009 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. 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. 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 paras 28, 29, 32-34, operative part 1) 2. The second sentence of Article 9(3) of Regulation No 207/2009 on the European Union trade mark 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. 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. In addition, 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. (see paras 44, 56-59, operative part 2)