In the main litigation from which the questions posed to the CJEU arise (Judgment of June 22, 2016, Matter C-280 / 15), the applicant and owner of an EU trademark filed a lawsuit for the illicit use of its trademark as “hidden search term” on a website. The use to which the complaint referred would have begun before the publication of its trademark application and would have continued beyond the publication of its registration.
compensation for the advantage improperly obtained through the violation calculated by multiplying the period of the violation by the license fee that was granted; and (iii) compensation for moral damage suffered as a result of the violation.
- First of all, the referring body considers whether art. 102.1 EMR should be interpreted as meaning that an EU trademark court must issue a resolution prohibiting a third party from continuing the acts of trademark infringement, even when the trademark owner did not make a claim in that regard before that court.
- The second and third questions posed by the referring body refer to art. 9.3, second sentence, EMR about indemnities and, specifically, they question two aspects:
(i) Whether the owner of an EU trademark can claim compensation for acts of third parties prior to the publication of the application for registration of the trademark in question; and
(ii) If in the case of events subsequent to the publication of the application for registration of that trademark, but prior to the publication of its registration, the concept of “reasonable compensation” that appears in that provision covers compensation for damages directed to repair the entire damage suffered by its owner, that is, the claim for the normal value obtained by the third party from the use of said trademark and compensation for the moral damage suffered.
- The rights conferred by an EU trademark registration application are conditional in nature, as there is still no certainty that the trademark applied for will be granted.
- From the above it follows that the reasonable compensation that can be claimed in an action based on a trademark application must be smaller in scope than that which can be claimed by the owner of a registered trademark.
- Furthermore, the actions in both cases appear differentiated in art. 96 EUTMR: letter a) refers to any action for infringement and letter b) to any action brought following facts referred to in Article 9.3, second sentence EUTMR.
- On the other hand the art. 13 of Directive 2004/48 establishes rules on compensation for damages that provide, on the one hand, for comprehensive compensation for the damage suffered, which may include non-material damage, in cases of acts of trademark infringement committed knowingly; and, on the other hand, the recovery of benefits or the payment of damages that may be pre-established when the acts of
violation was not committed knowingly.
trademark registration and must be limited to the recovery of the benefits actually obtained by the infringing third parties with the use of the trademark during that period, without including moral damage.
(1) Article 102(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark should be interpreted as not precluding , in application of certain principles of national law in
procedural matter, a trademark court of the European Union refrains from issuing a resolution that prohibits a third party from continuing the acts of trademark infringement, because the owner of the affected trademark has not filed an application in that regard before said court .
2) The second sentence of Article 9(3) of Regulation No 207/2009 must be interpreted as precluding the owner of a European Union trade mark from claiming compensation for acts of third parties prior to the publication of a trademark registration application. With regard to acts of third parties committed during the period following the publication of the application for registration of the trademark in question, but prior to the publication of its registration, the concept of "reasonable compensation", included in that provision , covers the claim of the benefits actually obtained by third parties from the use of that trademark during the aforementioned period. On the contrary, this concept of "reasonable compensation" excludes compensation for the most extensive damage that the owner of said trademark may have suffered, including, where appropriate, non-material damage.
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