The applicant was the proprietor of the EU word mark “HolzProf” for which she entered into a licence agreement giving the defendant the right to use the trade mark in return for payment of a monthly fee. The applicant alleged that the defendant had used her trade mark unlawfully for a period of time after publication of the application for registration of the mark but before publication of its registration by using a sign identical to that mark as a “hidden keyword” on a website accessible through the Internet. The applicant brought proceedings against the defendant before the Harju Maakohus (Harju District Court), Estonia, which referred to the Court of Justice of the European Union for a preliminary ruling questions concerning the interpretation of Council Regulation (EC) No 207/2009.
On the reference—
Held, that article 102(1) of Council Regulation (EC) No 207/2009 did not preclude an EU trade mark court from refraining, pursuant to certain principles of national procedural law, from issuing an order which prohibited a third party from proceeding with acts of infringement on the ground that the proprietor of the trade mark had not applied for such an order before that court. For the purpose of determining “reasonable compensation”, within the meaning of the second sentence of article 9(3) of Regulation No 207/2009, it was appropriate to apply the criterion relating to the recovery of profits and to exclude from that compensation redress for the wider harm that the proprietor of the trade mark concerned may have suffered on account of its use, which may include, in particular, moral prejudice. The criterion regarding the recovery of profits, in that it related to recovery of the profits unfairly derived by third parties from use of the trade mark during the period referred to in the second sentence of article 9(3) of Regulation No 207/2009, fell within the scope of the objective pursued by that provision, which consisted in preventing third parties from improperly benefiting from the intrinsic economic value constituted by the application for registration of a trade mark, when they were deemed to have had knowledge of that application as a result of its publication. The second sentence of article 9(3) of Regulation No 207/2009 precluded the proprietor of an EU trade mark from being able to claim compensation in respect of acts of third parties occurring before publication of an application for registration of a trade mark. In the case of acts of third parties committed during the period after publication of the application for registration of the mark but before publication of its registration, the concept of “reasonable compensation” referred to recovery of the profits actually derived by third parties from use of the mark during that period. That concept ruled out compensation for the wider harm which the proprietor of the mark may have suffered, including moral prejudice (paras 34, 57–58, 59, operative part).
U Ustav and T Pukk for the defendant.
K Kraavi-Käerdi, agent, for the Estonian Government.
K Georgiadis, agent, for the Greek Government.
J Samnadda, E Randvere and T Scharf, agents, for the European Commission.