No basis in EU law for the claim that the use of a national trade mark can have a have a curative effect in such a way as to maintain the rights attached to it after it has been surrendered. EU law precludes national legislation whereby the invalidity or revocation of an earlier national trade mark, the seniority of which is claimed for an EU trade mark, may only be established a posteriori if the trade mark can be declared invalid or revoked (1), not only at the time on which this earlier national mark was surrendered or lapsed, but also (2) on the date on which the court's decision in which this determination takes place.
P&C Düsseldorf is the proprietor of the German word and figurative marks "PuC", registered for clothing, the priority of which goes back to the year 1953. P&C Hamburg is the proprietor of the "PUC" Union brand, which was registered on 6 April 2001 for clothing and fashion accessoiries in particular. P&C Düsseldorf has brought an action for cancellation because of the expiry of the German word marks. Both parties subsequently declared that they would take the case without a decision, after which the marks were canceled on 9 and 31 August 2005. In 2010, P&C Düsseldorf brought an action for an order that P&C Hamburg may no longer rely on the seniority of the German word marks "PUC". Primarily because the brands could have been cancelled due to revocation, and in the alternative because P&C Düsseldorf would have older rights. The Landgericht Hamburg upheld the claim and the Oberlandesgericht Hamburg dismissed the appeal against that decision. Then the case ended up at the Bundesgerichtshof. They considered that the appeal court correctly interpreted Paragraph 125c (2) of the Markengesetz by considering that the conditions for canceling a trade mark due to decay must not only be met at the time when this trademark was renounced, but also at the time of the last oral hearing before the court before which a claim to establish the invalidity of this mark was pending. Nevertheless, the Bundesgerichtshof decided to ask two questions for a preliminary ruling.
The Court of Justice of the EU answers the question together and as follows:
"Article 14 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, read in conjunction with Article 34(2) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union] trade mark, must be interpreted as precluding an interpretation of national legislation according to which the invalidity or revocation of an earlier national mark, the seniority of which is claimed for an EU mark, may be established a posteriori only if the conditions for that invalidity or that revocation were met, not only on the date on which that earlier national mark was surrendered or the date on which it lapsed, but also on the date on which the judicial decision making that finding is taken."