The principle of trademark validation according to the EU Court of Justice: the case of the Heitech trademark

The EU Court of Justice has recently issued an interpretative ruling on the concept of "acquiescence" based on Article 9 of Directive 2008/95, and Articles 54 and 111 of Regulation No. 207/2009. According to these provisions, the owner of an earlier trademark is precluded from applying for a declaration of invalidity or opposing the use of a later trademark filed in good faith if, for a period of five consecutive years from the knowledge of the use, no action has been taken that clearly expresses opposition to such use.

The case originates from an action brought by the German company Heitec AG against the company Heitech and its administrator. The plaintiff is the owner of the European Union word trademark "HEITEC", filed in 1998 and registered in 2005.  The respondent is the owner of a German figurative trademark filed in 2002 and registered in 2003 and of a European Union figurative trademark registered in 2008, both containing the word element "heitech".

Upon learning in 2009 of the respondent's registration of the European Union figurative trademark, Heitec AG rejected the respondent's proposal for a coexistence pact and warned them  not to use the common denominative element.

In December 2012 Heitec AG decided to claim, before the Land Court, the infringement of the rights to its commercial name and, also, for the infringement of its word trademark against Heitech and its legal representative.  The company asked for an injunction against the respondent, preventing the use of goods or services bearing the word elements "heitech" or "heitech promotion", with an obligation to destroy any goods already produced and to pay damages. Due to the lack of diligence of the applicant, the summons was valid only in  2014.

In the first instance, the Land Court ordered the respondent to pay only the cease-and-desist letter costs, dismissing further claims.

On appeal, the Land Superior Court upheld the first instance decision on the grounds that Heitech had been using its later signs for an uninterrupted period of at least five years. In fact, the appellant, in this period knew of the trademark's existence and had tolerated its use. The Court established that the summons had not interrupted the period of estoppel.

Heitec decided to appeal the decision to the Federal Court of Justice, which submitted the following preliminary questions to the European Court of Justice:

- first, the Court asked whether a cease-and-desist letter could be an appropriate way to negate the tolerance, or if it was necessary to bring an action before an administrative authority or a court;

- second, if it was necessary to bring an action before a state authority, the question was whether the period of preclusion should be calculated from the date of the filing of the summons or from the day on which the defendants were served the act;

- third, there was a question whether the period of preclusion covered also related to claims based on trademark law, such as damages and the destruction of goods.

With regard to the first question, the European Court of Justice held that a cease-and-desist letter is not sufficient to interrupt the period of estoppel where it is not followed, within a reasonable time, by further action pursuing the same objective.

Regarding the second question, the Court of Justice has clarified that the filing of an application reflects a serious and unequivocal intention to enforce one's rights. However, there are cases in which this intention is not particularly clear because the summons did not meet the formal requirements laid down by domestic law. In such cases, it will be up to the national court to assess what date the introductory document is intended to be regularized. If this day is after the period of preclusion by forbearance, the proposed application should be considered inadmissible.

Heitec had become aware of the use of the later mark in 2009 and had filed the introductory act in 2012 but only regularized it between February and May 2014.

Finally, on the third point, the ECJ ruled that the preclusions also include related claims such as claims for damages and the destruction of goods.