IP case law Court of Justice

Referral C-531/20 (NovaText, 19 Oct 2020)



Can acquiescence within the meaning of Article 9(1) and (2) of Directive 2008/95/EC and Article 54(1) and (2) and Article 111(2) of Regulation (EC) No 207/2009 be excluded not only by means of an administrative or court action, but also through conduct not involving a court or administrative authority?

If Question 1 is answered in the affirmative: Does the sending of a warning letter, in which the proprietor of the earlier sign, before initiating legal proceedings, requires the proprietor of the later sign to agree to refrain from using the sign, and to enter into an obligation to pay a contractual penalty in the event of an infringement, constitute conduct precluding acquiescence within the meaning of Article 9(1) and (2) of Directive 2008/95/EC and Article 54(1) and (2) and Article 111(2) of Regulation (EC) No 207/2009?

When seeking judicial redress, is the bringing of the action before the court or the receipt of the action by the defendant decisive for calculating the five-year acquiescence period for the purposes of Article 9(1) and (2) of Directive 2008/95/EC and Article 54(1) and (2) and Article 111(2) of Regulation (EC) No 207/2009? Is it significant in this regard that receipt of the action by the defendant is delayed beyond the expiry of the five-year period through the fault of the proprietor of the earlier trade mark?

Does the limitation of rights in accordance with Article 9(1) and (2) of Directive 2008/95/EC and Article 54(1) and (2) and Article 111(2) of Regulation (EC) No 207/2009 encompass consequential claims under trade mark law, for example, claims for compensation, provision of information or destruction, as well as prohibitory injunctions?




Case details on the CJEU website (external link)


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