A recent Opinion in case C-561/11 from Advocate-General Mengozzi at the Court of Justice of the EU (CJEU) does not of itself appear to break much new ground.  However, assuming the Court follows his Opinion, the effect on the national laws of some countries, including the UK, may be further reaching.

An international association supporting dog-breeding, the Federation Cynologique Internationale (FCI) owns a Community trademark for a range of services in classes 35, 41, 42 and 44.

Click here to view trademark.

 Although the Association was set up in 1911, the mark was only applied for in June 2005 and was registered in 2006.

A private Spanish association in the same field, the Federacion Canina Internacional de Perros de Pura Raza (FCIPPR), owns a Spanish trademark for all these words together with the letters "F.C.I.", dating from 2004 and registered in June 2005.  They also own two further Spanish registrations, both later than June 2005, including one dating from February 2008 for the words FEDERACION  CINOLOGICA INTERNACIONAL + F.C.I. 

In February 2009, they also applied to register the following sign as a Community trademark in class 16:

Click here to view sign.

FCI opposed this registration, but omitted to pay the opposition fee.  The opposition was accordingly rejected and the mark registered in September 2010.

In June 2010 FCI started an action in a Court in Alicante for a declaration of invalidity of FCIPPR's two later Spanish national marks based on a likelihood of confusion with their earlier Community mark.  They also claimed for infringement by FCIPPR of their FCI Community mark.  FCIPPR denied any likelihood of confusion with its national trademarks and counterclaimed for invalidation of the FCI Community mark on the grounds of bad faith and a likelihood of confusion with their earliest Spanish registration.

In November 2010, FCI also filed for cancellation of the FCIPPR Community mark at OHIM.  These proceedings have been stayed pending resolution of an issue arising in the Court action.

In this correspondent's view, the two Community marks are unquestionably confusingly similar.  The complication which has arisen in the Court action that has given rise to the reference to the CJEU is that both Community marks are registered and each gives its proprietor exclusive rights.  Can the exclusive right which the Community Regulation confers under Art. 9 in relation to infringement be enforced at any time against a third party which is itself the owner of a similar later registered Community trademark, or does the later registration have to be declared invalid first?

This may not seem like rocket science, but several jurisdictions do accord the owner of a registered mark some immunity against infringement proceedings relating to its use.  In Spain itself, an "immunidad registral", developed through case law, means that a later registration has first to be invalidated before any infringement action relating to its use can be brought based on an earlier similar mark.  In the UK and Ireland, specific Sections of their laws (S.11 in the 1994 UK Act) state that a registered mark cannot be infringed by the use of another registered mark.  Thus, a registration in the UK would also have to be invalidated in some way before any action to prevent its use could succeed.

The immunity has developed since opportunities are provided to challenge trademark applications during the application procedure.  OHIM and some national registries do carry out pre-acceptance searches and provisions do exist to notify the owners of earlier registrations that similar later marks have been applied for by third parties.  The onus does then lie with the owner of the earlier mark to oppose the grant of the later application if he wishes, though the opportunity is often missed.

In the UK and Ireland, the provisions are more historical, stemming from earlier days when their Registries carried out much more rigorous searching and examination and refused applications that were considered confusingly similar to earlier registrations.  This gave any registration that was granted some expectation of validity.  For several reasons not unconnected with competition, expedience, cost, and having to deal with the excessive breadth of many Community mark registrations cited, this practice, at least in the UK, has now been watered down to something more akin to the OHIM procedure.  Notification to earlier proprietors of UK marks of similar later UK applications occurs, but this does not now apply to earlier Community mark holders.

The Advocate-General did discuss some of these points in some detail in his Opinion and has taken the view that Article 9 of the Community Regulation has to be construed to allow a prior registrant to prevent the use of a similarly confusing mark by anyone, even if they hold a later registration of that mark.  There evidently is logic in this, and any decision other than this could lead to what is intended to be a unitary right having different protection in different member states of the EU.  He made reference to an earlier Community Design case (Celaya) where a similar point had arisen, and the same decision made, though it was recognised that the examination procedures as between design and trademark applications were different. 

If this Opinion is followed by the CJEU, it will make life easier for proprietors who, for any reason, fail to prevent subsequent registrations of marks similar to their own.  It will also be interesting to see whether any S.11 defence in the UK would now succeed.