CJEU: Burden of proof in non-use revocation proceedings

14 March 2022

The Court of Justice of the European Union (‘CJEU’) has issued a decision that clarifies the allocation of the burden of proof in trademark revocation proceedings in EU Member States. The Tenth Chamber ruled that national non-use cancellation proceedings must follow EU provisions. Thus, the burden of proof for genuine use rests on the proprietor of the mark. Contrary procedural rules in the EU Member States are precluded.

The judgement of 10 March 2022 (file number: C-183/21) was rendered via a preliminary ruling. It was brought forward by the Regional Court of Saarbrücken, Germany and concerns the interpretation of Article 12 (1) of Directive 2008/95/EC and Articles 16, 17, 19 of Directive (EU) 2015/2436; all relating to the requirements of genuine use for a trademark. The German case at issue involves the revocation of two German trademarks based on non-use. The German judges pointed to a contradiction regarding such proceedings between the jurisdiction of the German Federal Court of Justice (‘BGH’) and the jurisdiction of the CJEU as held in the Ferrari judgement of 22 October 2020 (file number: C-720/18, C-721/18).

Contradiction between EU law and national law

According to established German case law, the applicant of a cancellation request has to set out the facts intended to show non-use of the trademark. This will imply the use of certain resources to demonstrate that the trademark has not been used in a genuine manner. Once met this requirement, the proprietor of the mark will then bear a ‘secondary’ burden of setting out the facts of genuine use. This contravenes the Ferrari judgement, in which the CJEU ruled that the burden of proof within the meaning of Article 12(1) of Directive 2008/95 rests solely on the proprietor of that mark.

CJEU: Conflicting national laws stand back

The CJEU held, that its considerations laid down in the Ferrari judgement also apply for proceedings in the EU Member States. A 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 prove that it carried out market research and that it was unable to establish that the trademark at issue was put to genuine use. Such a rule places the burden of proof regarding use or non-use at least partially upon the applicant and contradicts with Article 19 of Directive 2015/2436. Therefore, the according conflicting national laws or contradictory jurisdiction must stand back.

EU Member States may implement rules to avoid abuse

The German court had raised concerns regarding the interpretation of the CJEU as it may lead to an abuse of the proceedings. It can inter alia require the owner of the trademark to disclose trade secrets. The CJEU picked up these concerns and stated that the Member States may avoid these risks by making use of certain precautions such as provisions on a reimbursement of costs or the payment of according fees to commence revocation proceedings.