If the trademark owner tolerates trademark infringements for years, they may lose their right to the protection of the trademark. The ECJ determined this in a judgment dated May 19, 2022 (Case C-466/20).
Since trademarks represent a high value, it is important to register them and protect them from misuse by third parties. However, anyone who tolerates trademark infringements of their registered trademark for over five years without taking legal action may forfeit their trademark rights, explains the economic law firm MTR Legal.
The ECJ had already decided in 2011 that filing an administrative or judicial remedy against the trademark infringement ends the tolerance and also prevents forfeiture. In its current ruling, the ECJ clarified that a warning does not end the forfeiture period if the addressee does not comply and the trademark owner does not take further legal steps to enforce their trademark rights.
In the underlying case, the plaintiff had registered a Union word mark in 2005. Three years later, another company registered a figurative mark with a very similar verbal component, differing only slightly in spelling. The plaintiff unsuccessfully warned against the use of the opposing mark in 2009. At the end of 2012, they filed for an injunction at the Nuremberg-Fürth Regional Court, but it could only be served in 2014, as the plaintiff had not paid the court fee advance. The courts viewed the claims as forfeited.
The case eventually ended up before the Federal Court of Justice (BGH) and was referred to the European Court of Justice (ECJ). The ECJ was to clarify what requirements are placed on ending the tolerance of trademark infringement.
Even though the plaintiff had warned against the trademark infringement, the ECJ clarified that this alone is not sufficient to prevent the forfeiture of the claim. While the warning can interrupt the forfeiture period, it only does so if the trademark owner does not abandon their opposition to the violation of their trademark rights after an unsatisfactory response from the opponent and continues to use their legal options to enforce their trademark claims.
The ECJ’s case law shows that trademark owners must actively oppose the violation of their trademark rights. A warning will not always suffice.
Experienced attorneys in trademark law provide advice.
