Husqvarna prevailed over Lidl after a European Court decision

The European Court has ruled in case C-607/19 Husqvarna AB срещу Lidl Digital International GmbH & Co. KG. The case has the following background:

Husqvarna manufactures appliances and tools for gardening and landscaping. It is the proprietor of a three-dimensional EU mark, registered on 26 January 2000 under number 456244 for the goods ‘sprinklers for irrigation’.

From July 2014 until January 2015, Lidl offered for sale a spiral hose set consisting of a spiral hose, a sprinkler nozzle and a coupling sleeve.

Taking the view that the product marketed by Lidl constituted an infringement of its trade mark, Husqvarna brought an action for infringement against Lidl before the Regional Court, Düsseldorf, Germany, for the purposes of, inter alia, bringing the infringement to an end and obtaining damages.

Lidl, by way of counterclaim, requested the revocation of Husqvarna’s rights in the mark at issue in the main proceedings, alleging non-use of that mark.

The Regional Court, Düsseldorf upheld Husqvarna’s claims referred to in paragraph 20 of the present judgment and dismissed Lidl’s counterclaim.

Lidl brought an appeal against the judgment of that court before the Higher Regional Court, Düsseldorf, Germany, which, following the last hearing held before it on 24 October 2017, set aside that judgment and declared that Husqvarna’s rights in the mark at issue in the main proceedings were revoked as from 31 May 2017.

In that respect, the Higher Regional Court, Düsseldorf considered that the relevant date, for the purposes of calculating the continuous period of non-use, was not the date on which Lidl had filed its counterclaim, namely in September 2015, but that of the last hearing before that court, which had taken place on 24 October 2017. That court found that the goods protected by the mark at issue in the main proceedings had no longer been marketed as from May 2012 and therefore concluded that, at the date on which the counterclaim for revocation had been filed, the continuous period of five years referred to in Article 51(1)(a) of Regulation No 207/2009 had not yet expired, whereas that period had expired as at the date of the last hearing.

Husqvarna brought an appeal on a point of law (Revision) before the referring court, the Federal Court of Justice, Germany.

That court takes the view that the outcome of the dispute before it depends, first, on the question whether the determination of the relevant date for the purposes of calculating the five-year period referred to in Article 51(1)(a) of Regulation No 207/2009 and Article 58(1)(a) of Regulation 2017/1001 is governed by those regulations and, second, should that be the case, on how that date is to be determined.

According to that court, neither Article 51(1)(a) of Regulation No 207/2009 nor Article 58(1)(a) of Regulation 2017/1001 indicates the relevant date for the purposes of calculating the five-year period of non-use referred to in those provisions, where the request for the revocation of rights in the EU mark concerned is made by way of counterclaim.

In that regard, the Bundesgerichtshof (Federal Court of Justice) is of the view that that question is a procedural matter and that, in the absence of any clarification in Regulation No 207/2009 and Regulation 2017/1001, it falls within the scope of national law. That court states that that assessment follows from a combined reading of Article 14(3) and Article 101(3) of Regulation No 207/2009 and of Article 17(3) and Article 129(3) of Regulation 2017/1001, as is apparent from the judgment of 22 June 2016, Nikolajeva (C‑280/15, EU:C:2016:467, paragraph 28).

The referring court notes that, according to German civil procedure law, the court must base its decision on all arguments and facts relied on before the date on which the last hearing ends. Where an objection relating to revocation is raised in the course of legal proceedings by way of counterclaim, German trade mark law provides, in the first sentence of Paragraph 25(2) of the MarkenG, that the five-year period within which use must be demonstrated is to be calculated with regard to the date on which the action is brought. However, where the period of non-use comes to an end only after the action has been brought, the relevant date, pursuant to the second sentence of Paragraph 25(2) of the MarkenG, is the date on which the hearing ends. Furthermore, the second sentence of Paragraph 55(3) of the MarkenG provides that, in respect of an application for declaration of invalidity of a trade mark on the ground of the existence of an earlier mark, the proprietor of that earlier mark must, where the defendant has raised an objection, prove that it has been used during the last five years prior to the end of the hearing.

If the answer should be that both Regulation No 207/2009 and Regulation 2017/1001 determine the date with regard to which it must be ascertained whether the five-year period has come to an end, the referring court takes the view that the relevant date should be that of the last hearing before the court hearing the appeal on the merits.

In that regard, the referring court states that that solution is confirmed by recital 24 of Regulation 2017/1001, according to which there is no justification for protecting EU trade marks unless they are actually used. That court adds that taking the date of the last hearing as the relevant date for the purposes of calculating the five-year period of non-use of the EU mark meets the requirement of procedural economy, in that, should that period expire in the course of the proceedings, the party making the counterclaim would not be required to file a new application or counterclaim.

In those circumstances, the Federal Court of Justice decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) In the case of a counterclaim for the revocation of rights in an EU trade mark which was filed prior to the expiry of the five-year period of non-use, is the determination of the date which is relevant for the purposes of calculating the period of non-use in the context of Article 51(1)(a) of Regulation No 207/2009 and Article 58(1)(a) of Regulation 2017/1001 governed by those regulations?

(2) If Question 1 is to be answered in the affirmative: In the case of a counterclaim for the revocation of rights in an EU trade mark which was filed prior to the expiry of the five-year period of non-use referred to in Article 51(1)(a) of Regulation No 207/2009 and Article 58(1)(a) of Regulation 2017/1001, must that period be calculated by taking into account the date on which the counterclaim was filed or the date of the last hearing in the appeal on the merits?’

The Court’s decision:

Article 51(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark must be interpreted as meaning that, in the case of a counterclaim for the revocation of rights in an EU mark, the relevant date for the purposes of determining whether the continuous five-year period referred to in that provision has ended is the date on which that counterclaim was filed.