Request for a preliminary ruling from the Bundesgerichtshof (Germany) lodged on 25 September 2020 – HEITEC AG v HEITECH Promotion GmbH and RW

(Case C-466/20)

Language of the case: German

Referring court

Bundesgerichtshof

Parties to the main proceedings

Appellant: HEITEC AG

Respondents: HEITECH Promotion GmbH, RW

Questions referred

Can acquiescence within the meaning of Article 9(1) and (2) of Directive 2008/95/EC ¹ and Article 54(1) and (2) and Article 111(2) of Regulation (EC) No 207/2009 ² be excluded not only by means of an administrative or court action, but also through conduct not involving a court or administrative authority?

If Question 1 is answered in the affirmative: Does the sending of a warning letter, in which the proprietor of the earlier sign, before initiating legal proceedings, requires the proprietor of the later sign to agree to refrain from using the sign, and to enter into an obligation to pay a contractual penalty in the event of an infringement, constitute conduct precluding acquiescence within the meaning of Article 9(1) and (2) of Directive 2008/95/EC and Article 54(1) and (2) and Article 111(2) of Regulation (EC) No 207/2009?

When seeking judicial redress, is the bringing of the action before the court or the receipt of the action by the defendant decisive for calculating the five-year acquiescence period for the purposes of Article 9(1) and (2) of Directive 2008/95/EC and Article 54(1) and (2) and Article 111(2) of Regulation (EC) No 207/2009? Is it significant in this regard that receipt of the action by the defendant is delayed beyond the expiry of the five-year period through the fault of the proprietor of the earlier trade mark?

Does the limitation of rights in accordance with Article 9(1) and (2) of Directive 2008/95/EC and Article 54(1) and (2) and Article 111(2) of Regulation (EC) No 207/2009 encompass consequential claims under trade mark law, for example, claims for compensation, provision of information or destruction, as well as prohibitory injunctions?

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¹ Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25).

² Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).