According to the CJEU, The period of 5 years following registration constitutes a grace period for the trademark holder
The recent judgment of CJEU 21 December 2016, C-654/15 “Länsförsäkringar” deals with a request for preliminary ruling from the Supreme Court of Sweden in the context of the infringement of a trade mark which at the time the lawsuit was filed, was within the five-year period after registration referred to in Article 15 (1) of Regulation 207/2009 on the European Union trade mark (EUTMR).
In the case in question, the Court of First Instance upheld the suit, although the Court of Appeal held that the similarity of the goods and services in question should not be examined on the basis of the formal registration of the mark but on the activity actually carried out by the holder. In view of this, the Court concluded that there was no likelihood of confusion resulting from the overall assessment.
In the light of the foregoing, the question raised by the referring court was whether Article 9 (1) EUTMR was to be interpreted as meaning that, during the period of five years following the registration of a trade mark of the European Union, the similarity of the goods and services in question and therefore, the existence of a likelihood of confusion within the meaning of Article 9 (1) (b) EUTMR, had to be assessed in the light of all the goods and services for which the trade mark been registered or whether, on the contrary, only those products and services for which the proprietor had already initiated effective use of that mark should be considered in the assessment.
In that regard, the Court held that the wording of Articles 15.1 and 51.1 (a) and 51 (2) EUTMR grant the trademark holder a grace period consisting of the five consecutive years after registration to initiate an exclusive use of his/her trademark. During this period, the owner can claim the exclusive right granted by Article 9.1. EUTMR for all those products and services without having to prove their effective use.
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