Case C-246/05

Armin Häupl

v

Lidl Stiftung & Co. KG

(Reference for a preliminary ruling from the

Oberster Patent- und Markensenat)

(Trade mark law – Article 10(1) of Directive 89/104/EEC – Absence of genuine use of a trade mark – Concept of ‘date of the completion of the registration procedure’)

Opinion of Advocate General Ruiz-Jarabo Colomer delivered on 26 October 2006

Judgment of the Court (Third Chamber), 14 June 2007

Summary of the Judgment

1. Approximation of laws – Trade marks – Directive 89/104 – Absence of genuine use of a trade mark – Five-year period – Concept of ‘date of the completion of the registration procedure’

(Council Directive 89/104, Art. 10(1))

2. Approximation of laws – Trade marks – Directive 89/104 – Absence of genuine use of a trade mark – Concept of ‘proper reasons’ for non-use

(Council Directive 89/104, Art. 12(1))

1. The ‘date of the completion of the registration procedure’ within the meaning of Article 10(1) of Directive 89/104 on trade marks must be determined in each Member State in accordance with the procedural rules on registration in force in that State.

That provision defines the beginning of the period of use and therefore the starting point of the five-year period for which it provides in relation to the registration procedure, an area which is not harmonised by the directive. It follows that the Member States are free to organise their registration procedure and, accordingly, they can decide in particular when that procedure is to be regarded as having been completed.

(see paras 27-31, operative part 1)

2. Article 12(1) of Directive 89/104 on trade marks must be interpreted as meaning that obstacles having a direct relationship with a trade mark which make its use impossible or unreasonable and which are independent of the will of the proprietor of that mark constitute ‘proper reasons for non-use’ of the mark.

(see para. 55, operative part 2)

JUDGMENT OF THE COURT (Third Chamber)

14 June 2007 ( * )

(Trade mark law – Article 10(1) of Directive 89/104/EEC – Absence of genuine use of a trade mark – Concept of ‘date of the completion of the registration procedure’)

In Case C‑246/05,

REFERENCE for a preliminary ruling under Article 234 EC from the Oberster Patent- und Markensenat (Austria), made by decision of 9 February 2005, received at the Court on 10 June 2005, in the proceedings

Armin Häupl

v

Lidl Stiftung & Co. KG,

THE COURT (Third Chamber),

composed of A. Rosas, President of the Chamber, A. Tizzano, A. Borg Barthet (Rapporteur), U. Lõhmus and A. Ó Caoimh, Judges,

Advocate General: D. Ruiz-Jarabo Colomer,

Registrar: B. Fülöp, Administrator,

having regard to the written procedure and further to the hearing on 21 September 2006,

after considering the observations submitted on behalf of:

– A. Häupl, Patentanwalt, by himself, assisted by W. Ellmeyer, Patentanwalt,

– Lidl Stiftung & Co. KG, by H. Sonn, Patentanwalt,

– the Austrian Government, by C. Pesendorfer, acting as Agent,

– the French Government, by G. de Bergues, J.-C. Niollet and A.-L. During, acting as Agents,

– the Commission of the European Communities, by G. Braun, N.B. Rasmussen and W. Wils, acting as Agents,

after hearing the Opinion of the Advocate General at the sitting on 26 October 2006,

gives the following

Judgment

1 This reference for a preliminary ruling concerns the interpretation of Articles 10(1) and 12(1) 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; ‘the Directive’).

2 The reference has been made in a dispute between Mr Häupl and Lidl Stiftung & Co. KG (‘Lidl’) concerning the cancellation of a trade mark owned by the latter.

Legal framework

Community legislation

3 Article 10(1) of the Directive provides:

‘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.’

4 Under Article 12(1) of the Directive, ‘[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 …’.

International legislation

5 Article 3(4) of the Madrid Agreement concerning the International Registration of Marks of 14 April 1891, last revised at Stockholm on 14 July 1967 and amended on 28 September 1979 (‘the Madrid Agreement’), states that ‘[t]he International Bureau [of the World Intellectual Property Organisation (WIPO); “the International Bureau”] shall register immediately the marks filed in accordance with Article 1. The registration shall bear the date of the application for international registration in the country of origin, provided that the application has been received by the International Bureau within a period of two months from that date’.

6 The Agreement on Trade-Related Aspects of Intellectual Property Rights in Annex 1C to the Marrakesh Agreement establishing the World Trade Organisation was approved on behalf of the European Community by Council Decision 94/800/EC of 22 December 1994 concerning the conclusion on behalf of the European Community, as regards matters within its competence, of the agreements reached in the Uruguay Round multilateral negotiations (1986-1994) (OJ 1994 L 336, p. 1) (‘the TRIPS Agreement’). Article 19(1) thereof refers to the requirement of use of the registered trade mark in the following terms:

‘If use is required to maintain a registration, the registration may be cancelled only after an uninterrupted period of at least three years of non-use, unless valid reasons based on the existence of obstacles to such use are shown by the trademark owner. Circumstances arising independently of the will of the owner of the trademark which constitute an obstacle to the use of the trademark, such as import restrictions on or other government requirements for goods or services protected by the trademark, shall be recognised as valid reasons for non-use.’

National legislation

7 Paragraph 19 of the 1970 Law on the protection of trade marks (Markenschutzgesetz 1970, BGBl. 260/1970; ‘the MSchG’) provides that the ‘trade mark right arises on the day on which it is entered in the register of trade marks (registration). The protection period ends 10 years after the end of the month of registration.’

8 Paragraph 33a(1) of the MSchG reads as follows:

‘Anyone may apply for the cancellation of a mark which has been registered in Austria for at least five years or which enjoys protection in Austria pursuant to Paragraph 2(2), if that mark has not been put to genuine use in Austria in respect of the goods or services in respect of which it was registered (Paragraph 10a) either by the proprietor of the mark or, with his permission, by a third party within the five years preceding the day on which the application for cancellation was lodged, unless the proprietor of the mark can justify the non-use.’

9 In accordance with Paragraph 2, the MSchG is to apply analogously to trade mark rights acquired for the territory of the Republic of Austria on the basis of international agreements.

The main proceedings and the questions referred for a preliminary ruling

10 Lidl is the proprietor of the word and figurative mark ‘Le Chef DE CUISINE’. The German basic mark has been protected since 8 July 1993 and the international mark, which is also registered in respect of Austria, has been protected since 12 October 1993. The international mark was published on 2 December 1993 by the International Bureau and notified to the designated Contracting States.

11 Lidl operates a supermarket chain established in Germany since 1973. The first Lidl supermarket in Austria was opened on 5 November 1998. The defendant in the main proceedings sells ready-made meals bearing the mark ‘Le Chef DE CUISINE’ only in its own sales outlets. Before its first Austrian supermarkets opened, Lidl displayed the goods in the interior of its premises, agreed upon this with its suppliers and began to store the goods which had already been delivered.

12 On 13 October 1998, Mr Häupl sought, on the basis of Paragraph 33a(1) of the MSchG, to have that mark cancelled for the territory of the Republic of Austria on the ground of non-use. In his view, the five-year period provided for in that provision began to run from the beginning of the protection period, namely on 12 October 1993. Lidl challenged the application for cancellation. It submitted that that period began to run on 2 December 1993, with the result that it did not expire until 2 December 1998. On that date, the defendant was displaying for sale goods bearing the mark at issue in its first Austrian supermarket. It stated, moreover, that an expansion into Austria had already been contemplated since 1994, but that the opening of new supermarkets in that Member State had been delayed by ‘bureaucratic obstacles’, in particular delays in the issue of operating licences.

13 The Nichtigkeitsabteilung des Patentamtes (Cancellation Division of the Austrian Patent Office) declared that the mark was no longer protected in Austria as from 12 October 1998. Lidl lodged an appeal against that decision with the Oberster Patent- und Markensenat (Supreme Patent and Trade Mark Adjudication Tribunal).

14 In those circumstances, the Oberster Patent- und Markensenat decided to stay proceedings and to refer the following questions to the Court for a preliminary ruling:

‘1. Is Article 10(1) of the … Directive … to be interpreted as meaning that the “date of the completion of the registration procedure” means the start of the period of protection?

2. Is Article 12(1) of the … Directive to be interpreted as meaning that there are proper reasons for non-use of a mark if the implementation of the corporate strategy being pursued by the trade mark proprietor is delayed for reasons outside the control of the undertaking, or is the trade mark proprietor obliged to change his corporate strategy in order to be able to use the mark in good time?’

The jurisdiction of the Court

15 Before answering the questions referred, it is necessary to determine whether the Oberster Patent- und Markensenat is a court or tribunal within the meaning of Article 234 EC and whether the Court therefore has jurisdiction to rule on the questions referred to it.

17 In that respect, it is necessary to consider, as the Advocate General has done in points 25 to 29 of his Opinion, the provisions of the 1970 Law on Patents (Patentgesetz 1970, BGBl. 259/1970; ‘the Patentgesetz’).

19 The permanent nature of the Oberster Patent- und Markensenat may be inferred from Paragraph 70(2) and (3) and Paragraph 74(1) of the Patentgesetz, which provide that that body is to have jurisdiction to hear appeals against decisions of the Nichtigkeitsabteilung des Patentamtes and decisions of the Beschwerdeabteilung des Patentamtes (Opposition Division of the Austrian Patent Office) without any time-limit. It is clear from those provisions that the jurisdiction of that body is compulsory, since its competence to decide the abovementioned appeals is provided for by law and is not optional.

20 As regards the procedure before the Oberster Patent- und Markensenat, Paragraph 140(1) of the Patentgesetz refers to Paragraphs 113 to 127 and 129 to 136 of that law, which specifically lay down procedural rules indicating that that body applies rules of law and that the procedure before it is inter partes.

21 It follows from the foregoing that the Oberster Patent- und Markensenat is a court or tribunal within the meaning of Article 234 EC and that the Court therefore has jurisdiction to answer the questions submitted to it by that body.

The questions referred

The first question

22 By its first question, the national court asks whether Article 10(1) of the Directive is to be interpreted as meaning that the words ‘date of the completion of the registration procedure’ refer to the start of the period of protection. It therefore wishes to know whether the prescribed period of five years within which the trade mark proprietor must begin to put that trade mark to genuine use runs from the time at which the protection period of the trade mark concerned starts.

23 The applicant in the main proceedings and the Austrian Government take the view that the date of registration, that is, the time from which the protection period under Austrian law begins to run, is the ‘date of the completion of the registration procedure’ within the meaning of Article 10(1) of the Directive.

24 By contrast, for the defendant in the main proceedings, the French Government and the Commission of the European Communities, the words ‘date of the completion of the registration procedure’ refer not to the beginning of the protection period but to the date on which the examination procedure before the office responsible for that procedure is completed. Where there is an international registration procedure under the Madrid Agreement, that procedure cannot be completed before the period within which the national authorities may make a provisional refusal of protection has expired or the protection has been confirmed once and for all by those authorities.

25 In order to answer the first question in the reference, it is first of all necessary to point out that several legal systems are involved when a trade mark is registered internationally, as in the case in the main proceedings. Both the provisions of the Madrid Agreement, which in the main establishes the part of the registration taking place before the International Bureau, and the national legal provisions, which must comply with Community law, in particular the Directive, apply. In that respect, Article 1 of the Directive provides that it ‘shall apply to every trade mark … which is the subject of … an international registration having effect in a Member State’.

The second question

32 By its second question, the national court asks whether Article 12(1) of the Directive is to be interpreted as meaning that there are proper reasons for non-use of a mark if the implementation of the corporate strategy being pursued by the trade mark proprietor is delayed for reasons outside the control of the undertaking, or whether the trade mark proprietor is obliged, in such a case, to change that strategy so as to be able to use the mark in good time.

33 In that respect, according to the decision making the reference, the deferment of the sale on the Austrian market of the goods bearing the mark at issue in the main proceedings resulted, first, from Lidl’s strategy of selling those goods only in its own sales outlets and, second, from the fact that the opening of its first Austrian supermarkets was delayed by ‘bureaucratic obstacles’.

34 The Austrian Government expresses doubts as to whether that question is admissible, given that it is formulated in extremely abstract terms and the description of the facts is not sufficiently specific.

35 Although it is true that the decision making the reference gives only a short summary of the facts underlying the second question, whereas the parties to the main proceedings, by contrast, set out an extensive range of factual matters, the fact none the less remains that that circumstance is not such as to result in the inadmissibility of that question in the present case. Although the presentation of the facts by the national court is brief, it none the less enables the Court to understand sufficiently the context of which that question is part so that it can give a useful answer to that question enabling that court to decide the case in the main proceedings having regard to all the facts, which it alone may assess. The second question must therefore be considered to be admissible.

37 The applicant in the main proceedings states, however, that a corporate strategy can never, as such, constitute a ground of excuse and that in any event it is necessary to assess the actual conduct of the trade mark proprietor in response to difficulties outside the control of the undertaking.

38 For its part, the defendant in the main proceedings takes the view that factors outside the control of the undertaking which delay the implementation of a sound corporate strategy on an economic level do constitute proper reasons for non-use of the mark.

39 The Commission is of the opinion that there are no proper reasons for non-use of the mark when the implementation of the corporate strategy being pursued by the proprietor of that mark, which is generally within the purview of the latter, has been delayed for reasons outside the control of that proprietor, but the latter has failed to adapt that corporate strategy in good time.

40 According to the Austrian Government, there are proper reasons for non-use of a mark when it is the result of a delay in the implementation of a corporate strategy genuinely being pursued which is attributable to reasons outside the control of the undertaking, in particular legal reasons or overriding economic reasons.

41 Finally, the French Government submits that ‘proper reasons’ should be understood as circumstances arising independently of the will of the undertaking, such as government requirements or cases of force majeure.

42 First of all, it is necessary to decide whether the term ‘proper reasons’ within the meaning of Article 12(1) of the Directive should be given a uniform interpretation.

45 It is therefore for the Court to give a uniform interpretation to the concept of ‘proper reasons for non-use’, as referred to in Article 12(1) of the Directive.

46 That provision governs cases in which a mark has been registered but its proprietor has not made use of it. If that is the case during a continuous period of five years, the mark is liable to revocation unless the proprietor can demonstrate proper reasons.

47 It must be stated that Article 12(1) does not contain any indication of the nature and characteristics of the ‘proper reasons’ to which it refers.

49 Thus, under Article 19(1) of the TRIPS Agreement, circumstances arising independently of the will of the owner of the trademark which constitute an obstacle to the use of the trademark are to be recognised as valid reasons for non-use.

50 It is therefore necessary to determine what kind of circumstances constitute an obstacle to the use of the trademark within the meaning of that provision. Although, quite often, circumstances arising independently of the will of the owner of the trademark will at some time hinder the preparations for the use of that mark, the difficulties in question are difficulties which can be overcome in a good many cases.

52 In particular, as correctly stated by the Advocate General in point 79 of his Opinion, it does not suffice that ‘bureaucratic obstacles’, such as those pleaded in the main proceedings, are beyond the control the trade mark proprietor, since those obstacles must, moreover, have a direct relationship with the mark, so much so that its use depends on the successful completion of the administrative action concerned.

Costs

56 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 (Third Chamber) hereby rules:

1. The ‘date of the completion of the registration procedure’ within the meaning of Article 10(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be determined in each Member State in accordance with the procedural rules on registration in force in that State.

2. Article 12(1) of Directive 89/104 must be interpreted as meaning that obstacles having a direct relationship with a trade mark which make its use impossible or unreasonable and which are independent of the will of the proprietor of that mark constitute ‘proper reasons for non-use’ of the mark. It is for the national court or tribunal to assess the facts in the main proceedings in the light of that guidance.

[Signatures]

* Language of the case: German.