Damages still available for infringement even where trade mark revoked

AR markets alcohol and spirits and in 2005 filed an application for a French national trade mark for the mark SAINT GERMAIN at the INPI. The mark was registered on 12 May 2006 for alcoholic beverages (except beers), wines and so on. On 08 June 2012 AR brought infringement proceedings against Cooper and others for distributing liqueur under the mark ST-GERMAIN. In parallel proceedings AR’s SAINT GERMAIN mark was revoked with effect from 13 May 2011.

The question which then arose and was referred to the CJEU was whether the owner of a trade mark who has never used it and which has since been revoked may argue that the essential function of the trade mark has been affected and seek compensation for infringing acts occurring during the period in which the mark was registered (in this case 12 May 2006 to 12 May 2011).

The CJEU considered the question and concluded that EU member states had the option of allowing the owner of a trade mark to claim compensation for damage sustained before revocation took effect.

In the UK, the fact that an owner had not used a trade mark during the period of infringement is likely to impact the damages which may be awarded.

This decision is interesting because it reflects, to a degree, the UKIPO’s practice of treating trade marks which have been revoked as “hanging rights” which can still be used to oppose third party applications in certain situations. This contrasts with the approach of the EUIPO which generally takes the view that earlier rights need to be valid throughout the proceedings.