This case concerns a reference to the CJEU from the Estonian Harju District Court about the interpretation of Articles 9(3) (now replaced by Article 9b) and 102(1) of Regulation (EC) No 207/2009 (the ‘TM Regulation’).

Ms Nikolajeva is the proprietor of the EU trade mark “HolzProf” which has been licenced to a 3rd party since the date the trade mark application was filed. The “HolzProf” application was filed on 24 April 2010 and the application was published on 31 May 2010. The mark was then registered on 14 September 2010 and the registration was published on 16 September 2010.

Ms Nikolajeva brought proceeding in Estonia against Multi Protect OÜ alleging they had unlawfully used the HolzProf trade mark. Ms Nikolajeva requested a declaration that an infringing act had occurred and claimed payment of €22,791 restitution (calculated by multiplying the alleged 17 months 25 days of infringement by the monthly licence fee €1,278) and compensation for non-material harm, including for mental suffering. The Estonian Court referred three questions to the CJEU which can be summarised as follows:

1. Does Article 102(1) of the TM Regulation require an EU trade mark court to issue an order prohibiting continued infringement (injunction) in proceedings involving acts of trade mark infringement, even when such an order was not requested by the claimant?
2. In accordance with the second sentence of Article 9(3) of the TM Regulation, can compensation be claimed by a proprietor between publication of an EU trade mark application and publication of the eventual registration?
3. What does ‘reasonable compensation’ mean in the second sentence Art 9(3) of the TM Regulation?

In answer to the first question the Court considered Estonian national law, which prescribes that the subject matter of proceedings is determined by parties, and Art 101(3) of the TM Regulation which states that unless otherwise provided, an EU trade mark court is to apply the rules of procedure governing the same type of action relating to a national trade mark. Accordingly, the Court found that Art 102(1) of the TM Regulation does not explicitly require an EU trade mark court to issue a prohibitory order in every case of trade mark infringement.

The Court then moved onto questions 2 and 3 which were answered together. The Court considered that the firsts sentence of Article 9(3) of the TM Regulation states that exclusive rights in an EU trade mark shall prevail against 3rd parties from the date of publication of registration of the mark. However, the second sentence states “Reasonable compensation may, however, be claimed in respect of matters arising after the date of publication of an EU trade mark application” provided those matters would be prohibited following publication of the trade mark registration. Accordingly, “Reasonable compensation” is recoverable by the proprietor between publication of a trade mark application and the publication of the registration, after which the proprietor would benefit from exclusive rights in the mark and could claim full compensation.

CNG article 1

What does “Reasonable compensation” mean? The Court considered that it must be more limited, by its nature than protection enjoyed after registration, so any compensation must be smaller than damages for full infringement. The Court noted that in Article 96 of the TM Regulation, which lists areas of exclusive jurisdiction for the EU trade mark courts, that there is a distinction drawn between (a) infringement action and (c) action referred to in the second sentence of Article 9(3). Although not directly applicable, Article 13 of Directive 2004/48 (the Enforcement Directive) was also considered, from which it was inferred that ‘reasonable compensation’ cannot exceed reduced compensation set out in Article 13(2) (only limited recovery can be made where infringement was made without knowledge). The Court concluded that “reasonable compensation” mean profits actually derived by 3rd parties from use of the mark in that period, but rules out compensation for wider harm which the trade mark proprietor may have suffered, including moral prejudice.

The position with UK trade marks is slightly different to their European counterparts. The UK Trade Mark Act 1994 s9(3) states that rights of the proprietor have effect from the date of registration (which in accordance with s40(3) is the date of filing of the application). Provided that infringement proceedings are not initiated prior to registration of the mark and no offence under s92 (criminal offence) is committed before the date of publication of the mark (provisos in section 9(3)(a-b)), the proprietor of a UK trade mark need not consider the interim “reasonable compensation” period as their exclusive right runs from the date of filing the trade mark application. Accordingly, damages should be uniformly available from this date.

There appears to be a lack of harmonisation between EU and UK trade mark laws relating to damages/ compensation for trade mark infringement between filing and registration. The CJEU addressed this by stating that the TM Regulation "does not preclude the complementary application of national law relating to infringement, in particular national law relating to civil liability". This comment seems to suggest that national courts will continue to have power to apply national laws on damages, provided the protection does not fall short of that provided by EU law.

Link to Judgment

Judgment Date: 22 JUNE 2016