Conclusie A-G Cruz Villalón in de zaak tussen Martin y Paz Diffusion (MyP) tegen David Depuydt en Fabriek van Maroquinerie Gauquie: can the owner of a trade mark be permanently prevented from exercising its exclusive rights and from using the trade mark for certain goods because a third party has used the mark for these goods with the consent of the owner over an extended period of time?
The questions arise in a rather unusual factual situation. Both parties of the main proceedings – Martin y Paz Diffusion (‘MyP’) on the one hand and Fabriek van Maroquinerie Gauquie (‘Gauquie’) together with its director, David Depuydt, on the other – are active in the industry of leather fashion items. They have used the same trade mark, but each with respect to different goods. The parties initially cooperated, changing the trade mark they used over time. At one point MyP registered some of those trade marks. Later, the relationship of the parties deteriorated, resulting in several legal proceedings.
De A-G geeft het Hof in overweging de door het Hof van Cassatie van België gestelde prejudiciële vragen als volgt te beantwoorden:
– Under Article 5(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks the proprietor of a registered trade mark cannot give its consent to the use of its trade mark irrevocably. After the revocation of such consent, the exclusive right conferred by a registered trade mark can be asserted against the party that used the mark with the consent of the proprietor, even though the proprietor and that party shared the use of the trade mark – each for different goods, for which the mark was registered – over an extended period of time.
– National law on the wrongful or abusive exercise of rights may not permanently prevent the proprietor of a trade mark from exercising its rights with respect to some of the goods for which the trade mark is registered. This notwithstanding, Directive 89/104 does not prevent national law from providing for a different remedy.
– Article 5(1) of Directive 89/104 does not allow national courts to definitively prevent the proprietor of a registered trade mark from recommencing the use of the mark after terminating an undertaking to a third party not to use that mark for certain goods by way of the law of unfair competition based on benefits of the proprietor from and investments by the third party in the...
The questions arise in a rather unusual factual situation. Both parties of the main proceedings – Martin y Paz Diffusion (‘MyP’) on the one hand and Fabriek van Maroquinerie Gauquie (‘Gauquie’) together with its director, David Depuydt, on the other – are active in the industry of leather fashion items. They have used the same trade mark, but each with respect to different goods. The parties initially cooperated, changing the trade mark they used over time. At one point MyP registered some of those trade marks. Later, the relationship of the parties deteriorated, resulting in several legal proceedings.
De A-G geeft het Hof in overweging de door het Hof van Cassatie van België gestelde prejudiciële vragen als volgt te beantwoorden:
– Under Article 5(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks the proprietor of a registered trade mark cannot give its consent to the use of its trade mark irrevocably. After the revocation of such consent, the exclusive right conferred by a registered trade mark can be asserted against the party that used the mark with the consent of the proprietor, even though the proprietor and that party shared the use of the trade mark – each for different goods, for which the mark was registered – over an extended period of time.
– National law on the wrongful or abusive exercise of rights may not permanently prevent the proprietor of a trade mark from exercising its rights with respect to some of the goods for which the trade mark is registered. This notwithstanding, Directive 89/104 does not prevent national law from providing for a different remedy.
– Article 5(1) of Directive 89/104 does not allow national courts to definitively prevent the proprietor of a registered trade mark from recommencing the use of the mark after terminating an undertaking to a third party not to use that mark for certain goods by way of the law of unfair competition based on benefits of the proprietor from and investments by the third party in the...