What is the Scope of the “Reasonable Compensation” for a Trademark Infringement Established in Art. 9.3 EUTMR? – CJUE Judgment of 22 June 2016, C-280/15, “Nikolajeva”
Nuria Ruiz
Following the questions referred by the Harju District Court (Estonia), last June 22th of 2016 the CJEU issued a decision concerning the scope and the subject matter of the reasonable compensation established in Art. 9.3 of the Council Regulation 207/2009 of 26 February 2009 on the European Union trade mark (EUTMR), for those cases in which the infringement takes place between the application and the registration date of the concerned trademark.
The mentioned article states that: “The rights conferred by a Community trade mark shall prevail against third parties from the date of publication of registration of the trade mark. Reasonable compensation may, however, be claimed in respect of acts occurring after the date of publication of a Community trade mark application, which acts would, after publication of the registration of the trade mark, be prohibited by virtue of that publication. The court seized of the case may not decide upon the merits of the case until the registration has been published”. In such a way, application holders can adopt measures to protect their economic interests already in place at this stage of the registration procedure, even though they are not yet the owners of an exclusive right over the trademark. In fact, as indicated by the Court, a trademark application can be the subject-matter of various legal acts, such as a transfer, the creation of rights in rem or licenses, and therefore has an economic value that should not be left unprotected.
In the present case, Irina Nikolajeva, plaintiff and holder of an EU trademark, argued that an Estonian enterprise had been unlawfully using her sign as a “hidden keyword” during a particular period of time, which included the months preceding the registration. The plaintiff raised three claims before the Estonian courts:
- The declaration of the existence of an infringement
- The payment of a compensation for the unjust enrichment obtained by means of the said infringement
- The payment of a compensation for the non-material harm she claimed she had suffered, stating that “the bringing of the matter before the referring court and the institution of legal proceedings (…) caused her mental suffering”.
The request for a preliminary ruling of the Estonian Court concerns, as we already mentioned above, the interpretation of article 9.3 EUTMR, the main point of interest being the assessment of the costs and other forms of compensation included in this “reasonable compensation”, and, in particular, if it can include compensation for non-material harm.
Following the opinion of the Advocate General Wathelet, the CJEU has stated that “the protection taking the form of reasonable compensation, within the meaning of the second sentence of Art. 9(3) of Regulation No 207/2009, (…) must, by its nature, be more limited than the protection enjoyed by the proprietor of a trade mark for acts occurring after the date of its registration, since the interest to be protected in respect of an application for registration of a mark falls short of the interest to be protected which the mark must possess as a result of its registration”.
Regarding the determination of the compensation’s amount, the Court reminds that this is a competence of the national courts under Art. 101.2 EUTMR, given the absence of any EU rule. Nonetheless, the Court goes one step further in the definition of this concept, relating Art. 9.3 EUTMR to Art 13 of Directive 2004/48 on the enforcement of intellectual property rights. This provision establishes the applicable criteria to calculate damages in the event of a trademark infringement, discerning two situations:
“ 1. Member States shall ensure that the competent judicial authorities, on application of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in an infringing activity, to pay the right holder damages appropriate to the actual prejudice suffered by him/her as a result of the infringement.
(…)
- Where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity, Member States may lay down that the judicial authorities may order the recovery of profits or the payment of damages, which may be pre-established”.
In spite of the fact that this provision concerns infringements of already registered trademarks, the Court, following one more time the opinion of the Advocate General, uses it as a guidance for national courts, stating that “the sum payable by way of reasonable compensation cannot exceed the reduced compensation provided for in Article 13(2) of Directive 2004/48” .
Finally and in relation with compensation for non-material harm, it is excluded from the concept of “reasonable compensation” by the Court, noting that “it is therefore appropriate to apply the criterion relating to the recovery of profits and to exclude from that compensation redress for the wider harm that the proprietor of the trade mark concerned may have suffered on account of its use, which may include, in particular, moral prejudice”.
In conclusion, with this preliminary ruling the Court goes beyond (although there is still a long way to go) in the harmonization regarding the compensation for trademark infringement, offering the national judges an additional criterion for its determination.
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- CJEU Decision in “Genesis”, a good example of the relevance of the autonomous interpretation of the CTM Regulation
- The trade mark system reform: a closer look at the ‘intervening rights’ as a defence