Reasonable compensation in case of unlawful act before publication registration mark

TRADE MARK LAW

EU trade mark court not held to prohibit from proceeding with acts of infringement of a trade mark when the proprietor of such a trade mark has not applied for such an order (Article 102 CTM-Regulation)

In the light of the foregoing considerations, the answer to the first question is that Article 102(1) of Regulation No 207/2009 must be interpreted as not precluding an EU trade mark court from refraining, pursuant to certain principles of national procedural law, from issuing an order which prohibits a third party from proceeding with acts of infringement on the ground that the proprietor of the trade mark concerned has not applied for such an order before that court.
28 It should be recalled that Article 101(3) of Regulation No 207/2009 states that, unless otherwise provided in that regulation, an EU trade mark court is to apply the rules of procedure governing the same type of action relating to a national trade mark in the Member State in which the court is located.
29 Since Regulation No 207/2009 does not provide otherwise, it does not preclude application of the principle that the subject matter of proceedings is determined by the parties and of the principle of ne ultra petita.
There is no need to examine whether the absence of an obligation is justified on the basis that there is a ‘special reason’ (Article 102(1) CTM-Regulation)
31 As the absence of an obligation to issue an order referred to in Article 102(1) of Regulation No 207/2009 therefore follows from the application, which the regulation does not preclude, of rules of national procedural law, there is no need to examine whether that absence of an obligation is justified on the basis that there is a ‘special reason’ within the meaning of that provision.

No compensation possible in respect of acts of third parties occurring before publication for registration of a trade mark (Article 9(3) CTM-Regulation)

In the light of all the foregoing considerations, the answer to the second and third questions is that the second sentence of Article 9(3) of Regulation No 207/2009 must be interpreted as precluding the proprietor of an EU trade mark from being able to claim compensation in respect of acts of third parties occurring before publication of an application for registration of a trade mark.
38 However, in order to grant applicants for registration of a trade mark a degree of protection in the period between the date of publication of the application — the date from which the application is deemed to be known to third parties — and the date of publication of the mark’s registration, the second sentence of Article 9(3) of Regulation No 207/2009 lays down a right to ‘reasonable compensation’ in respect of acts having taken place during that period which, had they occurred after the date of registration of the mark, would have been prohibited.

Reasonable compensation for acts of third parties committed during the period after publication of the application for registration of the mark but before publication of its registration also refers to recovery of the profits, but it is not intended to make good all the harm, including non-material harm (Article 9(3) CTM-Regulation)

In the case of acts of third parties committed during the period after publication of the application for registration of the mark concerned but before publication of its registration, the concept of ‘reasonable compensation’ in that provision refers to recovery of the profits actually derived by third parties from use of the mark during that period.
55 Whilst those provisions apply, in themselves, only to acts of infringement and therefore to acts which have occurred after publication of the registration of the trade mark concerned and not to acts before its publication, such as those referred to in the second sentence of Article 9(3) of Regulation No 207/2009, it may, however, be inferred from them, as the Advocate General has, in essence, also observed in point 51 of his Opinion, that the sum payable by way of ‘reasonable compensation’ cannot exceed the reduced compensation provided for in Article 13(2) of Directive 2004/48.
On the other hand, that concept of ‘reasonable compensation’ rules out compensation for the wider harm which the proprietor of the mark may have suffered, including, as the case may be, moral prejudice.
56 Since the second sentence of Article 9(3) of Regulation No 207/2009 seeks to attach conditional rights to a trade mark from publication of the application for its registration and even before publication of its registration, the ‘reasonable compensation’, within the meaning of that provision, must have a narrower scope than the damages which may be claimed by the proprietor of an EU trade mark for acts of infringement occurring after publication of the registration of that mark and which are intended, in principle, to ensure full compensation for the harm actually suffered, which may, as the case may be, include moral prejudice.

IPPT20160622, CJEU, Nikolajeva v Multi Protect

C-280/15 - ECLI:EU:C:2016:467