Great news for trademark revocation proceedings in Germany!
In order to be valid, a trademark must be put to genuine use, failing which it can be challenged by any person for revocation and be lost.
The reversal of German case law by the CJEU
The Court of Justice of the European Union, in its decision of March the 10th 2022 (case C-183/21), has just overturned a well-established case law of the Bundesgerichtshof (German Federal Court of Justice), which obliged the applicant for revocation of a trademark to prove de facto the absence of use of the contested mark.
The practice of the Bundesgerichtshof: proving the absence of serious use of a trademark
But it is difficult to prove a negative fact! Especially since the applicant obviously does not have the internal business information of the trademark owner which are necessary to prove the absence of use of the trademark, while the trademark owner is in the best position to provide any evidence to support the claim that its trademark has been put to genuine use.
However, according to this German procedural rule, it is the plaintiff who must prove the facts he or she is claiming. This includes proof that a trademark has not been put to genuine use. This, according to German procedural practice in trademark matters, meant that the plaintiff had to carry out a market study on the possible use of the trademark by its owner and submit reasoned observations in support of its claim. The snake bites the tail...
The CJEU ruling reverses the burden of proof: it is up to the defendant to prove genuine use!
In its judgment of March the 10th, the CJEU recalled an earlier judgment: the FERRARI judgment of 22 October 2020 (C-720/18 and C-721/18, EU:C:2020:854, paragraph 82), in which it had ruled that the burden of proof of genuine use of a trademark lay with the trademark owner.
It further concluded that Article 19 of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks must be interpreted as precluding a procedural rule of a Member State which, in proceedings concerning an application for revocation of a trade mark for non-use, requires the applicant to carry out market research concerning the possible use of that mark by its proprietor and to make in that regard, to the extent possible, substantiated submissions in support of its application.
A confirmatory ruling, therefore, but one that will radically transform the German trademark revocation procedure.
Do you have questions regarding German or French trademark law? MARS-IP assists companies and individuals in the defence of their trademarks, ideas and intellectual property in Germany, France and internationally. Please contact us.
Picture : Court of Justice of the European Union
