According to Section 49 (1) MarkenG, a trademark is liable to revocation if the trademark has not been used pursuant to Section 26 MarkenG within an uninterrupted period of five years after the date on which opposition to it is no longer possible. In its latest judgement on the requirements for revocation of trade marks, the BGH abandons its previous case law (BGH, judgement of 14 January 2021 – I ZR 40/20), according to which use must be proven for the period after filing of the action until the conclusion of the oral proceedings. Rather, the point in time at which the action was filed, namely the date of service of the action, is to be taken into account.
The defendant is the proprietor of the German word mark “STELLA”, filed on 12 September 1978 and registered on 11 January 1982, with protection for the goods “wines, namely sparkling wines”. In an application received by the German Patent and Trademark Office (GPTO) on 2 May 2017, the plaintiff sought cancellation of the trademark “STELLA” on the grounds of lack of use. The District Court dismissed the action and the appeal was unsuccessful. The Court of Appeal held that the requirements for revocation of the trademark “STELLA” were not met. In its reasoning, the Court of Appeal stated that the plaintiff bore the burden of presentation and proof, whereas the proprietor of the trademark only bore a secondary burden of presentation, which the defendant had not met. Furthermore, the Court of Appeal assumed that the time between the filing of the action and the conclusion of the oral proceedings must also be included in the assessment of the relevant period. The plaintiff’s appeal against the Court of Appeal’s decision was successful.
The BGH set aside the challenged judgment and turned its back on its established case law, in particular on the calculation of the relevant period under Section 49 MarkenG as well as on the allocation of the burden of proof and presentation of evidence.
The BGH no longer adheres to its previous interpretation of Section 49 MarkenG. According to the new opinion of the BGH, the relevant period ends at the time of filing the action, namely at the time of service. If the action was preceded by an application for revocation at the GPTO, the date of receipt of the application at the GPTO is taken into account pursuant to Section 52 (1) MarkenG (new version).
Furthermore, following the recent case law of the ECJ (ECJ, GRUR 2020, 1301 – testarossa), the BGH states that the trademark proprietor now no longer has a secondary burden of proof for proving use, but the primary burden of presentation and proof, since the trademark proprietor himself is most capable of proving that his trademark has been used in a manner that preserves the rights.
Conclusion: The decision is particularly significant in that the trademark proprietor must fully prove the use of the challenged trademark in a way that preserves the rights. Furthermore, the relevant period of use is now no longer linked to the uncertainty of the holding of oral proceedings, but the calculation is now precisely defined. Ultimately, this change in case law follows the requirements of EU law and is thus very welcome.
Katharina von Seydlitz-Brandl