The mere request to stop infringements does not break the tolerance of the infringement
In Case C-466/20, the CJEU commented on the 5-year time limit for tolerating trade mark infringements and the possibility of breaking it by issuing a cease and desist notice.
Proceedings of the national court:
The Claimant is the proprietor of the EU word mark ‘HEITEC’. The Defendant, in turn, registered the word mark “heitech”. In response, the Claimant issued a cease and desist notice to the Defendant. Subsequently, the Claimant filed an action against the Defendant.
The action turned out to be unfounded. The domestic court pointed out that the sign “heitech” had been used by the Respondent for a period of at least 5 years, and that the service of the lawsuit had been made after the expiry of this period and therefore the time limit had not been interrupted.
The case came before the referring court, which wondered how the concept of tolerance was to be interpreted under EU law. In particular, the referring court had doubts as to whether the 5-year period for tolerating use of a mark could be interrupted only by the filing of an originating letter in administrative or judicial proceedings or also by the issuance of a cease and desist order.
By judgment of 19 May 2022 (ref. C-466/20), the CJEU held that Article 9 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 and Articles 54, 110 and 111 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark must be interpreted that an act, such as an action for an injunction, by which the proprietor of an earlier trade mark or other earlier right opposes the use of a later trade mark without, however, doing what is necessary to obtain a legally binding decision, does not interrupt the tolerance and therefore does not interrupt the time-limit for the loss of the claim laid down in those provisions.
The CJEU argued that in a case where the filing of the action “was preceded by the sending of a warning letter, with which the proprietor of the later mark did not comply, that warning letter may interrupt the period of limitation in consequence of acquiescence provided that, following the
unsatisfactory response to that warning letter, the proprietor of the earlier mark or other earlier
right continues to express its opposition to the use of the later mark and takes the measures
available to it to enforce its rights”. If, however, the proprietor merely issued a summons but did not subsequently continue to try to prevent the use of the mark, the 5-year period was not interrupted.
According to the CJEU, “Any interpretation of Article 9 of Directive 2008/95 and Articles 54, 110 and 111 of Regulation No 207/2009 to the effect that sending a warning letter is sufficient, in itself, to interrupt the period of limitation would allow the proprietor of the earlier mark or other earlier right to circumvent the regime for limitation in consequence of acquiescence by repeatedly sending a warning letter approximately every five years”.
It is important to recognise that the CJEU judgment discussed is not favourable to trade mark owners. This is because it requires that actions to prevent infringement of the mark include the drafting of an action. This may be particularly burdensome when the time limit for tolerating infringement is about to expire. Indeed, drafting a lawsuit requires significantly more time and money than preparing a cease and desist notice.
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