If the trademark owner tolerates trademark infringements for years, they may lose their right to trademark protection. The ECJ ruled on May 19, 2022 (Case C-466/20).
Since trademarks represent high value, it is important to register them and protect them from abuse by third parties. However, anyone who tolerates trademark infringements of their registered trademark for five years without taking legal action can forfeit their trademark rights, explains the commercial law firm MTR Rechtsanwälte.
The ECJ had already decided in 2011 that launching an administrative or judicial appeal against trademark infringement ends tolerance and also prevents forfeiture. However, in its latest ruling, the ECJ clarified that a warning does not end the forfeiture period if the recipient 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 wordmark in 2005. Three years later, another company registered an image trademark with a very similar word component that only slightly differed in spelling. In 2009, the plaintiff unsuccessfully warned against the use of the opposing trademark. At the end of 2012, she filed an injunction lawsuit at the Nuremberg-Fürth Regional Court, which could not be served until 2014 because the plaintiff had not paid the court fee advance. The courts considered the claims forfeited.
The case eventually landed before the Federal Court of Justice and was referred to the European Court of Justice. The ECJ was to clarify what requirements are placed on ending the tolerance of a trademark infringement.
Even if the plaintiff had issued a warning for the trademark infringement, this was not enough to prevent the forfeiture of the claim, the ECJ clarified. While the warning can interrupt the forfeiture period, it only does so if the trademark owner does not abandon their opposition to the infringement after the unsatisfactory reaction of 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 counteract infringements of their trademark rights. A warning will not always be sufficient.
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