A Slovenian company filed with the Court an action for cancellation of trademark AVTO MAGAZIN due to non-use for goods and services in classes 16, 25, 28, 35, 39 and 41. The defendant asserted use of a different sign and argued that the plaintiff lacked legal interest to cancel the contested trademark. Regarding legal interest, the plaintiff responded that legal interest need not be specifically asserted and proven before the Slovenian courts, and invoked, among others, existence of a public interest in cancelling unused trademarks (Preamble of CTMR) and its CTM registration and application for a sign, similar to the contested mark.
The Court established that the use of the contested trademark had not been proven because the defendant asserted the use of a different sign, and cancelled the contested trademark, but only partly. In regard to other classes the action was rejected without being considered on the merits because the plaintiff’s trademark registrations for AVTO MAGAZIN did not cover those classes, and in court’s opinion this meant lack of legal interest to cancel the contested trademark in these classes.
Both parties appealed to the Higher Court. The Higher Court upheld the first-instance judgment insofar as it partly cancelled the trademark. Moreover, it upheld the plaintiff’s appeal, set aside the first-instance judgment insofar as it rejected the cancellation action concerning other classes and remitted the case to first instance for consideration on the merits, holding that legal interest in cancellation of the contested trademark in its entirety should be recognized, due to the existence of a public interest in removing unused trademarks from the register.
It is expected that in the remitted proceedings the contested trademark will also be cancelled in the remaining classes.
Katja Kovacic – Plaintiff’s legal interest in non-use trademark cancellation equals public interest in removing unused trademarks from register, WTR, 2016