With judgment rendered on February 21, 2013, in the case Fédération Cynologique Internationale v. Federacion Canina Internacional de Perros de Pura Raza (Case C-561/11), European Court of Justice (ECJ) gave its opinion on the possibility for the proprietor to prevent, according to Article 9, par. 1, of the Reg. No. 207/2009 on Community Trademark (CTMR), a third-party to use a later-registered trademark without the need for that latter mark to have been declared invalid beforehand.
According to the ECJ, the right of a trademark owner to bring an action aimed to forbid the use of a later-registered trademark has to be found in art. 54 CTMR, concerning limitation in consequence of acquiescence, which states that where the proprietor of a Community trademark has acquiesced for a period of five successive years in the use of a later-registered Community trademark, he shall no longer be entitled to oppose the use of the later-registered trademark. Under such principle, before acquiescence takes effect, the proprietor of a Community trademark is entitled both to apply to OHIM for a declaration of invalidity of the later-registered Community trademark and to oppose its use through infringement proceedings before a Community trademark court.
In light of the above, the ECJ stated that the proprietor of a registered trademark has the right to prevent third parties from using identical or similar signs also against owners of a later-registered community trademark, without the need to have it declared invalid beforehand.