The requirement for use of EU mark in 5 years – decision of the EU Court

european_court_justiceweb-thumb-largeThe European Court ruled in case C‑654/15 Länsförsäkringar AB against Matek A/S. The case concerns the following:

Länsförsäkringar, which operates in the fields of banking, investment and insurance, is the proprietor of the EU figurative trade mark No 005423116. That mark was registered on 4 January 2008 in respect of, inter alia, services in Classes 36 and 37 of the Nice Agreement. In Class 36 the registration covers, inter alia, real-estate affairs; appraisal of real estate; rental of apartments and business premises; and real-estate management. In Class 37 it covers building construction; repair and maintenance; and installation services.

Matek’s principal activity consists in manufacturing and assembling wooden houses. In connection with that activity, Matek began in 2007 to use a logo whose registration it secured in 2009 for goods in Class 19 of the Nice Agreement, a class which covers ‘building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal’.

Since Länsförsäkringar took the view that, on account of the use of that logo in the years 2008 to 2011, Matek had infringed an exclusive right conferred by the EU trade mark of which it is the proprietor, it applied to the Stockholms tingsrätt (Stockholm District Court, Sweden) on the basis of Article 9(1)(b) of Regulation No 207/2009 for an order prohibiting Matek, on pain of a penalty payment, from using signs similar to that mark in Sweden in the course of trade. The Stockholms tingsrätt (Stockholm District Court) granted the application.

The Svea hovrätt (Svea Court of Appeal, Sweden) set that decision aside. Whilst the appellate court considered that the logo used by Matek was similar to the EU trade mark registered by Länsförsäkringar, it held, however, in contrast to the Stockholms tingsrätt (Stockholm District Court), that the examination of the similarity of the goods and services at issue had to be carried out on the basis not of the formal registration of that mark, but of the activity actually carried out by the proprietor. The Svea hovrätt (Svea Court of Appeal) thus concluded, on a global assessment, that there was no likelihood of confusion in the case in point.

Länsförsäkringar brought an appeal before the referring court, the Högsta domstolen (Supreme Court, Sweden), submitting that the assessment of the likelihood of confusion, within the meaning of Article 9(1)(b) of Regulation No 207/2009, must be based, during the period of five years following registration of an EU trade mark, solely on that registration and not on the actual use of the mark.

According to the referring court, it cannot be determined from the case-law of the Court of Justice what importance should be given, for the purpose of the application of Article 9(1)(b) of Regulation No 207/2009, to the registration, as against the actual use, of an EU trade mark in cases where a third party uses without authorisation, in the course of trade, a sign similar to such a mark during the period of five years following the mark’s registration.

In those circumstances, the Högsta domstolen (Supreme Court) decided to stay proceedings and refer the following questions to the Court for a preliminary ruling:

1. Does it affect the proprietor’s exclusive right that, during a period within five years from registration, he has not made genuine use of the [EU] trade mark in the European Union for goods or services covered by the registration?

2. If the answer to question 1 is in the affirmative, in what circumstances and in what way does that situation affect the exclusive right?’

The Court decision:

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.

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