10 March 2022 (*1)

(Reference for a preliminary ruling – Approximation of laws – Trade marks – Directive (EU) 2015/2436 – Article 19 – Genuine use of a trade mark – Burden of proof – Application to revoke for non-use – National procedural rule obliging the applicant to carry out market research concerning use of the mark)

In Case C‑183/21,

REQUEST for a preliminary ruling under Article 267 TFEU from the Landgericht Saarbrücken (Regional Court, Saarbrücken, Germany), made by decision of 4 March 2021, received at the Court on 23 March 2021, in the proceedings

THE COURT (Tenth Chamber),

composed of I. Jarukaitis, President of the Chamber, D. Gratsias (Rapporteur) and Z. Csehi, Judges,

Advocate General: N. Emiliou,

Registrar: A. Calot Escobar,

having regard to the written procedure,

after considering the observations submitted on behalf of:

–the European Commission, by G. Braun, G. Wilms and É. Gippini Fournier, acting as Agents,

having decided, after hearing the Advocate General, to proceed to judgment without an Opinion,

gives the following

Legal context

European Union law

Directive 2008/95

‘1. If, within a period of five years following the date of the completion of the registration procedure, the proprietor has not put the trade mark to genuine use in the Member State in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trade mark shall be subject to the sanctions provided for in this Directive, unless there are proper reasons for non-use.

The following shall also constitute use within the meaning of the first subparagraph:

(a)use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;

(b)affixing of the trade mark to goods or to the packaging thereof in the Member State concerned solely for export purposes.

…’

‘A trade mark shall be liable to revocation if, within a continuous period of five years, it has not been put to genuine use in the Member State in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

However, no person may claim that the proprietor’s rights in a trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application for revocation, genuine use of the trade mark has been started or resumed.

The commencement or resumption of use within a period of three months preceding the filing of the application for revocation which began at the earliest on expiry of the continuous period of five years of non-use shall be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application for revocation may be filed.’

Directive 2015/2436

‘It is essential to ensure that registered trade marks enjoy the same protection under the legal systems of all the Member States. …’

‘1. If, within a period of five years following the date of the completion of the registration procedure, the proprietor has not put the trade mark to genuine use in the Member State in connection with the goods or services in respect of which it is registered, or if such use has been suspended during a continuous five-year period, the trade mark shall be subject to the limits and sanctions provided for in Article 17, Article 19(1), Article 44(1) and (2), and Article 46(3) and (4), unless there are proper reasons for non-use.

…

(a)use of the trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor;

(b)affixing of the trade mark to goods or to the packaging thereof in the Member State concerned solely for export purposes.

‘The proprietor of a trade mark shall be entitled to prohibit the use of a sign only to the extent that the proprietor’s rights are not liable to be revoked pursuant to Article 19 at the time the infringement action is brought. If the defendant so requests, the proprietor of the trade mark shall furnish proof that, during the five-year period preceding the date of bringing the action, the trade mark has been put to genuine use as provided in Article 16 in connection with the goods or services in respect of which it is registered and which are cited as justification for the action, or that there are proper reasons for non-use, provided that the registration procedure of the trade mark has at the date of bringing the action been completed for not less than five years.’

‘1. A trade mark shall be liable to revocation if, within a continuous five-year period, it has not been put to genuine use in the Member State in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

‘1. Member States shall bring into force the laws, regulations and administrative provisions necessary to comply with Articles 3 to 6, Articles 8 to 14, Articles 16, 17 and 18, Articles 22 to 39, Article 41, Articles 43 and 44 and Articles 46 to 50 by 14 January 2019. Member States shall bring into force the laws, regulations and administrative provisions to comply with Article 45 by 14 January 2023. They shall immediately communicate the text of those measures to the Commission.

…’

‘Directive [2008/95] is repealed with effect from 15 January 2019, without prejudice to the obligations of the Member States relating to the time limit for the transposition into national law of [First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1)] set out in Part B of Annex I to Directive [2008/95].

References to the repealed Directive shall be construed as references to this Directive and shall be read in accordance with the correlation table in the Annex.’

German law

The facts giving rise to the dispute in the main proceedings and the question referred for a preliminary ruling

‘Is EU law, in particular with regard to [Directive 2008/95], in particular in Article 12, and Directive [2015/2436], in particular in Articles 16, 17 and 19, to be interpreted as meaning that the effet utile of those provisions prohibits an interpretation of national procedural law which:

(a)imposes on the applicant in civil proceedings for cancellation of a national registered trade mark on grounds of revocation for non-use a burden of setting out the facts, as distinguished from the burden of proof; and

(b)requires the applicant, in the context of that burden of setting out the facts,

–to make, in such proceedings, substantiated submissions regarding the defendant’s non-use of the trade mark, to the extent that it is possible for the applicant to do so; and

–to carry out, for that purpose, its own research into the market, in a manner which is appropriate to the request for cancellation and to the specific nature of the trade mark concerned?’

Consideration of the question referred

Admissibility

24Maxxus submits, in essence, that in a judgment of 14 January 2021 the Bundesgerichtshof (Federal Court of Justice) held, following delivery of the judgment of 22 October 2020, Ferrari (C‑720/18 and C‑721/18, EU:C:2020:854), that, in proceedings for revocation of a trade mark for non-use, the applicant must only assert that the proprietor of that trade mark has not made use of it, as the burden of proof and the burden of setting out the facts fall, in German law, on the proprietor of the mark at issue. It follows, according to Maxxus, that it is not necessary to answer the question submitted by the referring court in order to resolve the dispute in the main proceedings.

25In that regard, it is clear from settled case-law that the Court is empowered to rule solely on the interpretation or validity of EU law in the light, inter alia, of the legal situation as described by the referring court, in order to provide that court with such guidance as will assist it in resolving the dispute before it (judgment of 20 December 2017, Schweppes, C‑291/16, EU:C:2017:990, paragraph 21 and the case-law cited).

26Furthermore, the Court has repeatedly held that it is solely for the national court before which the dispute has been brought, and which must assume responsibility for the subsequent judicial decision, to determine, in the light of the particular circumstances of the case, both the need for and the relevance of the questions which it submits to the Court (judgment of 6 October 2021, Consorzio Italian Management and Catania Multiservizi, C‑561/19, EU:C:2021:799, paragraph 35 and the case-law cited). Consequently, where the questions submitted concern the interpretation of EU law, the Court is in principle bound to give a ruling (judgment of 20 December 2017, Schweppes, C‑291/16, EU:C:2017:990, paragraph 23 and the case-law cited).

27The Court may thus refuse to rule on a question referred for a preliminary ruling by a national court only where it is quite obvious that the interpretation of EU law that is sought bears no relation to the actual facts of the main action or its purpose, where the problem is hypothetical, or where the Court does not have before it the factual or legal material necessary to give a useful answer to the questions submitted to it (judgment of 20 December 2017, Schweppes, C‑291/16, EU:C:2017:990, paragraph 24).

28That is not the situation here. The referring court has set out and interpreted German procedural rules, under its own responsibility, and has taken them to mean that, in proceedings for revocation of a trade mark for non-use, the applicant must comply with certain requirements regarding the setting out of the facts, upon which the admissibility of its application depends. The referring court asks the Court, in essence, whether Directive 2008/95 or Directive 2015/2436 must be interpreted as precluding national rules which impose such requirements. It is clear that such a question bears a direct relation to the subject matter of the main action.

29Therefore, the request for a preliminary ruling is admissible.

Substance

30First of all, it should be pointed out that it is clear from the documents sent to the Court by the referring court that the application for revocation which forms the subject matter of the main proceedings was lodged on 28 November 2019. The period within which the Member States were to transpose Directive 2015/2436 into national law, laid down in Article 54(1) of that directive, expired on 14 January 2019. That directive, pursuant to Article 55 thereof, repealed and replaced Directive 2008/95. Whilst it is true that the relevant provisions of Directives 2008/95 and 2015/2436 are substantially the same, the fact remains that the present reference for a preliminary ruling must be examined in the light of Directive 2015/2436 (see, to that effect, judgment of 2 July 2020, mk advokaten, C‑684/19, EU:C:2020:519, paragraph 4).

31In addition, neither Article 16 of Directive 2015/2436, relating to the concept of genuine use of a trade mark and the period within which its proprietor must have put it to such use, nor Article 17 of that directive, relating to non-use as a defence in infringement proceedings, is of direct relevance for answering the referring court’s question. Therefore, the question referred should be answered in the light solely of Article 19 of that directive.

32In the light of those clarifications, the referring court should be considered to be asking by its question, in essence, whether Article 19 of Directive 2015/2436 must be interpreted as precluding a procedural rule of a Member State which, in proceedings concerning an application for revocation of a trade mark for non-use, requires the applicant to carry out market research concerning the possible use of that mark by its proprietor and to make in that regard, to the extent possible, substantiated submissions in support of its application.

33In this connection, it should be pointed out that the question of the burden of proof in respect of genuine use, within the meaning of Article 19(1) of Directive 2015/2436, in the context of proceedings relating to revocation of a trade mark for non-use does not constitute a procedural provision falling within the competence of the Member States (see, by analogy, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 76 and the case-law cited).

34If that question were a matter for the national law of the Member States, the consequence for proprietors of trade marks could be that protection would vary according to the legal system concerned, with the result that the objective of ‘the same protection under the legal systems of all the Member States’ set out in recital 10 of Directive 2015/2436, where it is described as ‘fundamental’, would not be attained (see, by analogy, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 77 and the case-law cited).

35Furthermore, the principle under which it is for the proprietor of the mark to prove genuine use of that mark is in reality merely an application of common sense and of a basic requirement of procedural efficacy. It is the proprietor of the mark at issue which is best placed to adduce evidence in support of the assertion that its mark has been put to genuine use (judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraphs 78 and 81 and the case-law cited).

36It follows that Article 19 of Directive 2015/2436 must be interpreted as meaning that the burden of proof that a trade mark has been put to ‘genuine use’, within the meaning of that provision, rests on the proprietor of that mark (see, by analogy, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 82).

37It is true that the fact that the applicant, in a given procedure, does not have to bear the burden of proof does not necessarily release that party from the obligation to provide, in its application, a full statement of the facts upon which it bases its claims.

38However, it is clear from Article 19 of Directive 2015/2436 that an application for revocation of a trade mark on the basis of that provision is founded on the claim that the mark has not been put to genuine use by its proprietor. Such a claim, by its nature, does not lend itself to a more detailed statement.

39In that regard, it must be stated that the national procedural rule contemplated by the referring court goes beyond a mere obligation on the applicant to set out the facts upon which its application is founded. That rule requires the applicant to state and, in the event of challenge, to prove that, before its application was lodged, it carried out market research and that it was unable to establish that the trade mark at issue was put to genuine use.

40Such a rule thus places the burden of proof of use, or non-use, of the trade mark at issue at least partially on the applicant, although, according to the case-law cited in paragraph 36 of the present judgment, that burden rests exclusively on the proprietor of that mark.

41The risk, mentioned by the referring court, of a proliferation of applications for revocation on the ground of non-use that constitute an abuse cannot result in a different interpretation.

42For the purpose of guarding against such a risk, which, moreover, concerns not only proceedings for revocation of a trade mark for non-use but all judicial proceedings, there are, as the Commission has observed, various appropriate procedural means of deterring abuse of process.

43Those procedural means include the possibility of laying down provisions enabling an application for revocation on the ground of non-use to be dismissed summarily as manifestly inadmissible or manifestly unfounded, or the applicant to be ordered, if its claims are rejected, to pay the costs incurred by the proprietor of the trade mark at issue. It is also possible to require the applicant to pay a fee when it brings its action. It is clear from the documents before the Court that, in this instance, Maxxus had to pay such a fee.

44As regards the risk, mentioned by the referring court, of revocation proceedings for non-use of a trade mark being brought solely in order to secure the disclosure of the trade secrets of that mark’s proprietor, it is clear from the Court’s case-law that ‘genuine use’ of the trade mark, within the meaning of Article 19(1) of Directive 2015/2436, entails use of the mark on the market for the goods or services protected by that mark and not just internal use by the undertaking concerned (judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).

45It follows that the evidence of genuine use of a trade mark must relate to use of that mark on the market, which, as such, is not covered by commercial confidentiality.

In the light of all the foregoing considerations, the answer to the question referred is that Article 19 of Directive 2015/2436 must be interpreted as precluding a procedural rule of a Member State which, in proceedings concerning an application for revocation of a trade mark for non-use, requires the applicant to carry out market research concerning the possible use of that mark by its proprietor and to make in that regard, to the extent possible, substantiated submissions in support of its application.

Costs

Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.

On those grounds, the Court (Tenth Chamber) hereby rules:

Article 19 of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks must be interpreted as precluding a procedural rule of a Member State which, in proceedings concerning an application for revocation of a trade mark for non-use, requires the applicant to carry out market research concerning the possible use of that mark by its proprietor and to make in that regard, to the extent possible, substantiated submissions in support of its application.

[Signatures]

*1 Language of the case: German.