Opinion of the Advocate General — ECLI:EU:C:2019:755
Date: 2019-09-18
Language of the case: French
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Reference for a preliminary ruling
Origin: France

Summary of the facts and the procedure 
1 According to the findings of the cour d’appel de Paris (Court of Appeal, Paris), 
AR, founder of the company Part des anges that markets spirits and other 
alcoholic drinks, was the proprietor of the semi-figurative French trade mark Saint 
Germain No 3 395 502, filed on 5 December 2005 to designate, inter-alia, 
alcoholic beverages (with the exception of beers), ciders, digestives, wines and 
spirits and alcoholic extracts and essences, in classes 30, 32 and 33. 
2 On 8 June 2012 AR, having learnt that the company Cooper International Spirits 
was distributing an elderflower liqueur under the name ‘St-Germain’, 
manufactured by St Dalfour and a subcontractor of that company, Établissements 
Gabriel Boudier, brought proceedings against those three companies before the 
tribunal de grande instance de Paris (Regional Court, Paris, France) for trade mark 
infringement by reproduction or, in the alternative, by imitation. 
3 In parallel proceedings, brought by the company Osez vous ?, by a judgment of 
28 February 2013 the tribunal de grande instance de Nanterre (Regional Court, 
Nanterre, France) revoked AR’s semi-figurative trade mark Saint Germain 
No 3 395 502 from 13 May 2011 in respect of alcoholic beverages (with the 
exception of beers), ciders, digestives, wines, spirits and alcoholic extracts and 
essences. A judgment of 11 February 2014 of the cour d’appel de Versailles 
(Court of Appeal, Versailles, France) confirmed all aspects of that judgment that, 
not having been appealed, has become irrevocable. 
4 Before the tribunal de grande instance de Paris (Regional Court, Paris) AR 
maintained its claims of infringement for the period not covered by limitation and 
prior to the revocation, that is to say, from 8 June 2009 to 13 May 2011. 
5 By a judgment of 16 January 2015 that court, after finding that the trade mark in 
question had not been exploited since it had been filed, dismissed AR’s claims in 
full. 
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6 By a judgment of 13 September 2016 the cour d’appel de Paris (Court of Appeal, 
Paris) upheld that judgment. 
7 After noting that the name at issue did not reproduce all the elements constituting 
AR’s trade mark and finding that the visual differences were not so insignificant 
that they could go unnoticed by the average consumer, that court held that the 
alleged infringement could only be found to have occurred under Article L. 713-3 
of the French Intellectual Property Code that prohibits imitation of a mark and use 
of an imitated mark, in connection with goods that are identical or similar to those 
designated in the registration, without authorisation by the proprietor, if that 
imitation or use could give rise to a likelihood of confusion on the part of the 
public. 
8 It found that assessing the likelihood of confusion on the part of the public, which 
must be carried out globally, having regard for the overall impression given by the 
signs concerned, presupposes that the mark relied upon has been exploited in such 
a way that it has been brought into contact with consumers. 
9 In that regard, it observed in the first place that the tribunal de grande instance de 
Nanterre (Regional Court, Nanterre), as then endorsed by the cour d’appel de 
Versailles (Court of Appeal, Versailles), having found that AR had not 
demonstrated genuine use of the Saint Germain trade mark since it was filed, 
partially revoked its rights from 30 May 2011, on expiry of five years from the 
date on which registration of the mark was published, 12 May 2006, for the goods 
at issue in these proceedings. 
10 That court then noted that AR was contending that its mark had in fact been 
exploited or, at the very least, that there had been the early stages of exploitation 
and that its function of indicating origin had therefore been adversely affected, 
arguing that simply because the acts constituting use of the mark had been found 
to be insufficient during the period examined by the tribunal de grande instance de 
Nanterre (Regional Court, Nanterre) for the purposes of renewing the mark, that 
did not mean that those acts could not be taken into consideration when examining 
whether the mark had fulfilled a function of indicating origin. 
11 After examining the documents that AR had submitted in proceedings on that 
point, the cour d’appel (Court of Appeal) found that, whilst that evidence did 
establish that there were preparations for launching the Saint Germain cognac 
cream liqueur and that AR’s company Part des anges had participated in trade 
fairs in 2007, it was nevertheless insufficient to show that the trade mark Saint 
Germain had actually been brought into contact with the public. 
12 It then found that, since AR had therefore failed to demonstrate that its mark had 
actually been exploited, that company could not tenably argue that the mark’s 
function as a guarantee of origin, which is intended essentially to guarantee the 
origin of the goods or services to consumers by distinguishing them from those 
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offered by competitors, had been adversely affected, thereby presupposing that the 
mark had been in contact with those consumers. 
13 The cour d’appel (Court of Appeal) took the view, for the same reason, that AR 
could not claim that the monopoly on exploitation conferred by its trade mark had 
been adversely affected. 
14 Lastly, in so far as AR also alleged that the investment function of its mark had 
been adversely affected, referring to the judgment of 22 September 2011 of the 
Court of Justice of the European Union (CJEU) (Interflora, C-323/09, 
EU:C:2011:604), the cour d’appel (Court of Appeal), having recalled that AR had 
not established that it had exploited its trade mark, held that AR could not 
complain that a competitor was using a sign that was identical to that mark, if it 
was indeed found to be identical, thereby, AR alleged, ‘substantially’ hindering its 
use of that mark. 
15 On 21 December 2016 AR appealed against that judgment. 
16 In support of its appeal, AR criticises the judgment for dismissing its claims of 
infringement of the Saint Germain trade mark No 3 395 502 for the period from 
8 June 2009 to 13 May 2011 whereas, according to the ground of appeal, for a 
period of five years following registration of a trade mark, the proprietor of the 
mark can prevent third parties from using, in the course of trade, a sign that is 
identical or similar to its mark and liable to have an adverse effect on the 
functions of the mark, and is not required to show genuine use of that mark for 
those goods or services, and submitted that, consequently, by finding that it could 
not rely either on an adverse effect on the function of the Saint Germain trade 
mark as a guarantee of origin or on an adverse effect on the monopoly on 
exploitation its mark confers, or even on an adverse effect on the investment 
function of the mark, on the grounds that it had failed to show that its mark had 
actually been exploited, even though it was entitled to prevent third parties from 
using, in the course of trade, a sign that was identical or similar to its mark and 
liable to have an adverse effect on the functions of the mark, and was not required 
to show genuine use of the Saint Germain trade mark or, therefore, to demonstrate 
that the mark was actually exploited, the cour d’appel (Court of Appeal) had 
infringed Articles L. 713-3 and L. 714-5 of the Intellectual Property Code. 
Summary of national law 
17 Under Article L. 713-1 of the Intellectual Property Code, ‘registration of a mark 
confers on its proprietor a property right over that mark for the goods and services 
designated by the proprietor’.  
18 Article L. 713-2 of that code provides that: ‘the following are prohibited, without 
authorisation by the proprietor:  
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a) the reproduction, use or affixing of a mark, even where accompanied by 
words such as “formula”, “manner”, “system”, “imitation”, “type” or “method”, 
and the use of a reproduced mark, for goods or services identical to those 
designated in the registration;…’. 
19 Article L. 713-3 of that Code provides that ‘the following are prohibited, without 
authorisation by the proprietor, where it may give rise to a likelihood of confusion 
on the part of the public: 
... 
b) imitation of a mark and use of an imitated mark, for goods or services 
identical or similar to those designated in the registration.’ 
20 Those articles must be interpreted in the light of Article 5 of 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. 
21 Since the ground of appeal alleges infringement of Article L. 713-3 of the 
Intellectual Property Code, it follows that the cour d’appel (Court of Appeal) is 
not reproached for examining the infringement only in the light of that article that 
prohibits infringement by imitation, which presupposes that a likelihood of 
confusion on the part of the public has been established. 
22 According to settled case law, the court hearing the case on the merits has sole 
discretion to assess whether there is a likelihood of confusion and the Cour de 
cassation (Court of Cassation) reviews only the method used by the lower court, 
which must abide by the criteria apparent from the EU case-law that the Court of 
Cassation itself applies. 
23 Lastly, Article L. 714-5 of the Intellectual Property Code provides as follows: 
‘The rights of a trade mark proprietor will be revoked where, without proper 
reasons, it has not genuinely used the mark, for the goods and services to which 
the registration relates, for an uninterrupted period of five years. .…’. 
24  That article must be interpreted in the light of Articles 10 and 12 of Directive 
2008/95. 
25 The appeal poses the question of whether the proprietor of a trade mark, which 
has never exploited that mark and whose rights over it were revoked for lack of 
genuine use on expiry of the five-year period following publication of its 
registration, is entitled to bring infringement proceedings and to claim 
compensation for injury to it resulting from use by a third party of a sign similar to 
the aforementioned mark, before the date on which the revocation took effect, to 
designate goods and services identical or similar to those for which the mark in 
question was registered. 
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26 That question has never before arisen before the Cour de cassation (Court of 
Cassation). 
Grounds for the reference for a preliminary ruling 
27 AR argues that, in so far as it is the registration that determines the subject matter 
of the exclusive right over the mark under Article L. 713-1 of the Intellectual 
Property Code, the likelihood of confusion within the meaning of Article L. 713-3 
must be assessed in the abstract, by reference to the subject matter of the 
registered mark in question, which may or may not be exploited, instead of in the 
light of an actual situation on the market, and that there may therefore be a 
likelihood of confusion and, consequently, the infringement may be established, in 
the case of a mark that is not exploited and is accordingly unknown to consumers. 
It adds that the five-year period under Article L. 714-5 of that code is intended 
precisely to enable the proprietor, from the time it files the trade mark, to prepare 
its project, without having to begin exploiting its mark immediately, but whilst 
nevertheless enjoying protection, and that, in consequence, to hold that an 
infringement is only conceivable if the mark is actually exploited would be 
tantamount to rendering that article meaningless and, moreover, to imposing an 
additional condition on the bringing of infringement proceedings for which neither 
EU law nor the Intellectual Property Code provides, rendering it subject to 
effective exploitation of the mark for the five years preceding revocation for lack 
of genuine use. AR argues, moreover, that it is possible to verify whether the 
protected trade mark performs its functions even if it is not actually exploited, that 
it is sufficient for the sign at issue to adversely affect ‘potential’ functions of the 
mark, and that infringement has moreover always been assessed by reference to 
use of the infringing sign instead of use of the registered sign. AR infers from the 
foregoing that the Saint Germain trade mark should have enjoyed the protection of 
the Intellectual Property Code throughout the five-year period preceding the order 
revoking it and accordingly criticises the cour d’appel (Court of Appeal) for 
holding that it could not claim either an adverse effect on that mark’s function as a 
guarantee of origin or an adverse effect on the monopoly on exploitation its mark 
conferred, or even an adverse effect on the ‘investment’ function of the mark, on 
the grounds that it had failed to show that its mark had actually been exploited. 
28 For their part, Cooper International Spirits, St Dalfour and Établissements Gabriel 
Boudier submit that use of the sign can only adversely affect the exclusive right of 
the trade mark proprietor if it compromises one of its functions, that a mark only 
performs its essential function if it is actually exploited by its proprietor to 
indicate the commercial origin of the goods and services designated in its 
registration and that, if the proprietor does not exploit its mark in accordance with 
its essential function, it cannot claim that there has been any adverse effect or risk 
of an adverse effect on that function. They contend that, in practice, wherever a 
proprietor does not use its mark to distinguish its goods, there is no likelihood that 
the public will be led to make the slightest link between its goods and those of the 
third party that uses a similar sign, or of the public mistaking the origin of the 
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goods in question. Those companies add that the mark’s essential function, which 
its proprietor has never itself used, could never have been compromised, in any 
way whatsoever, and that it is precisely because it neglected to use its mark, in 
accordance with that essential function, that the proprietor has been denied any 
exclusive right over its mark. According to those companies, trade mark law 
would be deflected from its purpose and would no longer perform its role as the 
key element in a system of undistorted competition were it to be allowed that a 
person that has merely filed a mark but has never exploited it could reserve the 
right to claim damages from third parties who exploit similar signs. To do so 
would amount to giving that proprietor a completely undue competitive 
advantage. 
29 According to settled case law of the CJEU, the essential function of a trade mark 
is to guarantee the identity of origin of the marked goods or services to the 
consumer or end user by enabling him, without any possibility of confusion, to 
distinguish the goods or services from others which have another origin 
(judgments of 18 June 2002, Philips, C-299/99, EU:C:2002:377, paragraph 30, 
and of 12 November 2002, Arsenal Football Club, C-206/01, EU:C:2002:651, 
paragraph 48) and the risk that the public might believe that the goods or services 
in question come from the same undertaking or, as the case may be, from 
economically-linked undertakings constitutes a likelihood of confusion within the 
meaning of Article 5(1)(b) of 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 (judgments of 22 June 1999, C-342/97, Lloyd 
Schuhfabrik Meyer, C-342/97, EU:C:1999:323, paragraph 17, and of 6 October 
2005, Medion, C-120/04, EU:C:2005:594, paragraph 26). 
30 In relation to infringement by imitation, the CJEU has therefore held that use of a 
sign which is identical with, or similar to, the trade mark, which gives rise to a 
likelihood of confusion on the part of the public affects or is liable to affect the 
essential function of the mark (judgment of 12 June 2008, 02 Holdings Limited, 
C-533/06, EU:C:2008:339, paragraph 59) and, although it has also found that a 
trade mark’s function of indicating origin is not the only function of the mark that 
is worthy of protection against injury by third parties (judgment of 22 September 
2011, Interflora, C-323/09, EU:C:2011:604, paragraph 39), that court has 
nevertheless indicated that the protection afforded against infringement by 
reproduction, in so far as it is absolute and reserved for injury caused, not only to 
the mark’s essential function, but also to other functions, in particular those of 
communication, investment or advertising, is broader than the protection against 
infringement by imitation, the application of which requires proof of a likelihood 
of confusion and accordingly the possibility that the essential function of the mark 
may be affected (judgment of 18 June 2009, L’Oréal, C-487/07, EU:C:2009:378, 
paragraphs 58 and 59). 
31 Lastly the CJEU has held that a trade mark is always supposed to fulfil its 
function of indicating origin, whereas it performs its other functions only in so far 
as its proprietor uses it to that end, in particular for the purposes of advertising or 
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investment (judgment of 22 September 2011, Interflora, C-323/09, 
EU:C:2011:604, paragraph 40). 
32 In the light of that case-law it would appear that, since the present case turns on 
whether or not there is infringement by imitation, all that needs to be looked for is 
the alleged adverse effect on the essential function of the mark, resulting from a 
likelihood of confusion. 
33 By a judgment of 21 December 2016 (Länsförsäkringar, C-654/15, 
EU:C:2016:998), the CJEU held that ‘Article 9(1)(b) of Council Regulation (EC) 
No 207/2009 of 26 February 2009 on the [European Union] 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.’ 
34 The CJEU highlighted in that respect that in laying down in Articles 15(1) and 
51(1)(a) of Regulation No 207/2009 a rule under which an EU trade mark that has 
not been used for a period of five years is to be revoked, the EU legislature, as is 
apparent from recital 10 of the regulation, intended to make preservation of the 
rights connected with an EU trade mark conditional on the mark being actually 
used, and that this condition can be explained by the consideration that it would 
not be justifiable if a mark which is not used were to obstruct competition by 
limiting the range of signs which can be registered as marks by others and by 
denying competitors the opportunity to use a sign identical or similar to that mark 
when putting onto the internal market goods or services which are identical or 
similar to those covered by the mark in question (Länsförsäkringar, 
paragraph 25). 
35 The CJEU also held that the five-year period from registration of the mark, during 
which the rights of the proprietor cannot be declared to be revoked, is a grace 
period allowed to the proprietor for beginning genuine use of his mark, during 
which he may rely on the exclusive rights which the mark confers, in respect of all 
those goods and services, without having to demonstrate such use 
(Länsförsäkringar, paragraph 26). 
36 It accordingly found that, in determining 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 (Länsförsäkringar, paragraph 27). 
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37 Nevertheless, the situation that the CJEU was called upon to examine in 
Länsförsäkringar, in which the five-year period had not yet expired and in which 
no application for revocation on grounds of lack of genuine use could, by 
definition, have been made, is not the same as the situation in the present case, 
which poses the question of whether a person that has never exploited its trade 
mark and whose rights over it were revoked on expiry of the five-year period can 
claim that an essential function of its mark has been adversely affected and that it 
has been caused injury, as the result of alleged use by a third party of an identical 
or similar sign during the five-year period following registration of the mark, and 
whether that person can claim damages. 
38 The CJEU appears not to have ruled on the question that the ground of appeal 
raises in the present case. Furthermore, in Länsförsäkringar, it found that, since 
that was not the situation in that instance and the referring court was not seeking 
any explanation in that regard, it was not required to rule on whether, from the 
time that the period of five years following registration of the EU trade mark 
expires, the extent of that exclusive right could be affected by the finding — made 
following a counterclaim, or a defence as to the merits, lodged by the third party 
in infringement proceedings — that the proprietor had at that time not yet begun 
genuine use of his mark in respect of some or all of the goods and services for 
which it had been registered (Länsförsäkringar, paragraph 28). 
39 It is apparent that the proceedings raise a serious difficulty as regards 
interpretation of Article 5(1)(b) and Articles 10 and 12 of 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, in particular in the light of 
the objective, defined in recital 9 of that directive, of providing that a trade mark 
may not be successfully invoked in infringement proceedings if it is established as 
a result of a plea that the rights of the trade mark proprietor could be revoked.  
40 The question therefore arises of whether the essential function of a trade mark 
could have been affected, as the result of a likelihood of confusion on the part of 
the public, within the meaning of Article 5(1)(b) of Directive 2008/95, where its 
proprietor has not availed itself of the five-year grace period under Articles 10 and 
12 of that directive to begin genuine use of its mark, to such an extent that its 
rights were revoked on expiry of that period, that is to say, whether the mark’s 
essential function, which its proprietor has never itself used, can be adversely 
affected by use by a third party, during that period, of a sign similar to the trade 
mark for goods or services identical or similar to those for which the mark had 
been registered. 
41 That question can be reduced to determining whether the proprietor of a trade 
mark which has never used it and whose rights have been revoked on the terms 
established in Articles 10 and 12 of Directive 2008/95 can, solely on the grounds 
of the exclusive right afforded by registration of the mark up to the effective date 
of revocation, successfully claim infringement within the meaning of 
Article 5(1)(b) of that directive, against a third party that has, during that period, 
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used a sign similar to the trade mark for goods or services identical or similar to 
those for which the trade mark had been registered.  
42 It is therefore appropriate to refer a question to the Court of Justice of the 
European Union. 
ON THOSE GROUNDS: 
Having regard to Article 267 of the Treaty on the Functioning of the European 
Union; 
Refers the following question to the Court of Justice of the European Union for a 
ruling: 
Must Article 5(1)(b) and Articles 10 and 12 of 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 be interpreted as meaning that a 
proprietor which has never exploited its trade mark and whose rights over it were 
revoked on expiry of the period of five years following publication of its 
registration can obtain compensation for injury caused by infringement, claiming 
an adverse effect on the essential function of its trade mark, caused by use by a 
third party, before the effective date of the revocation, of a sign similar to that 
trade mark to designate goods or services identical or similar to those for which 
that trade mark was registered? 
Stays proceedings pending a ruling by the Court of Justice of the European Union; 
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GROUND OF APPEAL annexed to this judgment 
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