Case C‑148/17

Peek & Cloppenburg KG, Hamburg

v

Peek & Cloppenburg KG, Düsseldorf,

(Request for a preliminary ruling from the Bundesgerichtshof)

(Reference for a preliminary ruling — Trade-mark law — Directive 2008/95/EC — Article 14 — Establishment a posteriori of the invalidity or revocation of a trade mark — Date on which the conditions for revocation or invalidity must be met — Regulation (EC) No 207/2009 — EU trade mark — Article 34(2) — Claiming the seniority of an earlier national mark — Effects of that claim on the earlier national mark)

Summary — Judgment of the Court (Second Chamber), 19 April 2018

Approximation of laws — Trade marks — Directive 2008/95 — Establishment a posteriori of the invalidity or revocation of a trade mark — Determination of the date when the conditions were present for the revocation or invalidity of an earlier national trade mark — Claiming the seniority of the earlier national trade mark for the EU trade mark — Effects of that seniority after the earlier national trade mark has been cancelled

(Council Regulation No 207/2009, Art. 34(2); European Parliament and Council Directive 2008/95, Art. 14)

Article 14 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, read in conjunction with Article 34(2) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark, 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.

Although Article 14 of Directive 2008/95 does not stipulate the date which should be used in order to examine whether the conditions for invalidity or revocation have been met, it is nevertheless clear from the wording and purpose of that provision that the examination in question is intended to determine retrospectively whether those conditions had been met on the date on which the earlier national mark was surrendered or allowed to lapse. Accordingly, the requirement that the conditions for the invalidity or revocation of that mark must also be met on the date on which a ruling is made on the application seeking to establish a posteriori that invalidity or that revocation is not compatible with that provision.

It should be pointed out, first of all, that the possibility of making use of a national mark which has been surrendered was in no way intended by Directive 2008/95. In addition, it is clear from recital 5 and Article 1 that that directive applies only to those marks which were the subject of a registration or of an application for registration, so that a cancelled mark is no longer in existence in the light of that directive.

Next, it follows from the second subparagraph of Article 12(1) of Directive 2008/95 that the use of the mark is taken into consideration only on the date of the filing of the application for revocation, possibly brought forward by three months in the circumstances referred to in the third subparagraph of that provision. It would therefore not be consistent with that provision to take into consideration, in proceedings seeking to establish a posteriori the revocation of a mark, the use made after the date on which the proprietor himself declared his surrender of that mark or allowed it to lapse.

Finally, it is clear from Article 34(2) of Regulation No 207/2009 that the only effect of the seniority of an earlier national mark claimed for an EU mark is that the proprietor of that earlier national mark, who surrendered it or allowed it to lapse, is to be deemed to continue to have, in the Member State in or for which it was registered, the same rights as he would have had if that mark had continued to be registered. That provision thus creates a fiction intended to enable the proprietor of the EU mark to continue to enjoy, in that Member State, the protection enjoyed by the earlier national mark which was cancelled and not to enable that mark to continue to exist in the same form. It follows, in particular, that any use of the sign at issue after that cancellation must be regarded, in such a case, as use of the EU mark and not of the cancelled earlier national mark.

(see paras 26, 28-30, operative part)