AG’s opinion on «reasonable compensation» under Article 9(3) of Regulation No 207/2009

Following a reference by a national court (Harju District Court, Estonia) to the Court of Justice of the European Union (CJEU) for a preliminary ruling (Case C-280/15), Attorney General (AG) Wathelet gave his opinion that reasonable compensation for infringement of a Community trade mark may not be claimed prior to the date of publication of that trade mark application and that the words «reasonable compensation» exclude moral prejudice.


The case held at Harju Maakohus (Harju District Court) which gave rise to the request for a preliminary ruling consists primarily of a claim for damages based on the provisions on unjust enrichment and moral harm. The plaintiff argued that by using a sign identical with her trade mark as a ‘hidden keyword’ on a website, the defendant infringed Article 9(1)(a) and (2)(d) of Regulation No 207/2009. The infringement was supposed to occur in three different periods. The first period comprised time between the date of filing of the application to register the trade mark and the date of publication of the application. The second period refers to the time between the publication of the trade mark application and the date the publication of the registration. The third and last period begins with the publication of the registration.


The referring court addressed 3 questions to the CJEU, two of which were analysed by the AG.


The period of protection


The Estonian national law has a provision (§ 8 of the Law on trade marks) which gives protection to trade marks from the date of filing of the application for registration. With regard to this § and to Articles 14(1) and 101(2) of Regulation No 207/2009, the referring court had doubts if national rules should be applied and reasonable compensation for infringement under Article 9(3) of the Regulation should be conferred to acts that occurred in the first above mentioned period.


The AG opined that such interpretation goes beyond what is permitted by the Regulation and so reasonable compensation can be claimed only in respect of act that took place after the date of publication of a Community trade mark application. He explains that effects of a Community trade marks are governed exclusively by the provisions of the Regulation and such effects are inseparable from its period of protection. As the Regulation does not confer any rights for the period prior to the publication of the application, reasonable compensation under Article 9(3) of the Regulation also cannot be claimed.


Reasonable compensation


The AG first analyses the words ‘compensation’ and ‘reasonable’ and gets to the conclusion that it should be pecuniary and it should be proportionate. The AG follows that the right to reasonable compensation is a very similar right to the right which will be conferred on him upon publication of the registration of the trade mark, albeit smaller in scope. He analyses Article 13 of the Directive 2004/48/EC on the enforcement of intellectual property rights which distinguishes between intentional and unintentional character of the infringement and assimilates the right for reasonable compensation to the unintentional character of the infringement (Art. 13(1) paragraph 2) on the assumption that it should be less severe the compensation imposed in the case of infringement of a registered trade mark. As the Article 13(1), paragraph 2 of the Directive does not provide for compensation for moral prejudice, he concludes that the words ‘reasonable compensation’ within the meaning of Article 9(3) of the Regulation No 207/2009 also exclude moral prejudice.