Düsseldorf - By a judgment given today (C-148/17), the European Court has, in an action between Peek & Cloppenburg Duesseldorf and Peek & Cloppenburg Hamburg, for the first time declared a provision of the German Trade Mark Act ineffective for not conforming with European law.
In the case before the Court, Peek & Cloppenburg Hamburg had given up two German trade marks first registered in 1978 and 1982 and sought to transfer the priorities of these marks to its identical European marks registered in 2001. Such transfer is allowed by European trade mark legislation. The fresh priorities for the European marks were then challenged by Peek & Cloppenburg Duesseldorf.
The Court held that domestic marks must not be liable to removal for non-use at the time of renunciation. Otherwise, the priority will be lost. German trade mark law, in s. 125c (II) 2 of the German Trade Mark Act, differs. It requires a mark to be not only not liable for removal at the day of renunciation but also not liable for removal at a specific later date. The European Court has now declared this statutory provision of German law not to be in conformity with European law and gave judgment for Peek & Cloppenburg Duesseldorf. Following on from there, the European Court also held that the priority acquired for the European mark through such renunciation transfers to the European mark.
As Professor Dr. Paul Lange , Solicitor of Siebeke Lange Wilbert in Düsseldorf, who acted for Peek & Cloppenburg Düsseldorf, explained:
„The judgment of the European Court is of particular importance for owners of international trade mark portfolios. Where such a portfolio contains a mark registered as a domestic mark in several individual EU member states and an identical European mark, it is open to the trade mark owner to renounce the domestic marks. The valuable priorities of the domestic marks transfer to the European mark and, thus, remain in force. His rights in the countries where the mark was registered as a domestic mark remain unaffected but he has now only one European mark with different priority dates in different EU countries. He only needs to pay for the renewal of the European mark but will still keep any national priority date by sufficient use of the European mark.
The use does not need to be in any particular EU country. It suffices if its use takes place in a significant part of the European Union. This has considerable advantages for the trade mark owner. He may, for instance, retain the valuable priority in Spain by just showing adequate use of the mark in Germany. In international infringement proceedings, he does no longer need to prepare at great expense documentary evidence to prove use for each individual jurisdiction. In cases of relocation of his business, full trade mark protection may be maintained simply by sufficient use at the new place of business.
All that is needed is that the national mark at the time it was renounced had not yet expired, as has now been confirmed by the Court.
I expect that the German draft Trade Mark Reform Act will now have to be amended as it did not intend to make any change to a position which has now become untenable in consequence of the judgment of the European Court. “