BGH overturns established case law on proof of use in favor of plaintiff trademark owners

The interpretation and standardization of national law on the basis of European law requirements always brings uncertainties – and this is also the case in trademark law. For owners of German trademarks, however, thanks to the decision of the Federal Court of Justice of January 14, 2021 (Case No. I ZR 40/20) and the recently implemented EU Directive on the approximation of the laws of the Member States relating to trademarks, the requirements in the context of an application for revocation or the filing of an action for revocation have now been reduced. This means that in the future it will be easier to remove unused interfering trademarks, which technically only exist on paper.

What has been common practice for Union trademark owners for a long time now finally benefits German trademark owners. Whereas it was previously the case that the applicant/claimant for revocation had to show and prove that the defendant’s trademark had not been used for an uninterrupted period of five years after the date on which it was no longer possible to oppose it, and was therefore ready for cancellation, it is now up to the defendant to show that its trademark has been used and to provide the relevant evidence. What was previously difficult for the plaintiff to prove anyway, is now imposed on the defendant, who, as the CJEU already recognized in 2013, is probably in the best position to prove that his trademark was seriously used.

However, the Federal Court of Justice overturned its previous case law twice by also rejecting the “moving use period” in the legal action. From now on, the five-year period of use must always be calculated back from the time the action is filed and no longer, as previously, from the time of the last oral hearing. On the one hand, this creates clearer, uniform requirements; on the other hand, however, trademark owners who are attacked by an action for injunctive relief, for example, can no longer file a counterclaim for revocation when the grace period for use is approaching expiration.

Practice Tip:

Trademark owners whose application for revocation before the German Patent and Trademark Office or whose revocation action before the ordinary courts has recently been rejected due to insufficient submissions should check the appeal deadlines and consider taking action against the decision that is negative for them. In addition, owners of German trademarks who may have been reluctant to file a revocation application or a lawsuit due to the previously existing requirements should become active.