The Court of Justice of the European Union recently held in the case of Fédération Cynologique Internationale (“FCI”) and Federación Canina Internacional de Perros de Pura Raza (“FCIPPR”) that the meaning of Article 9(1) of the Community Trademark Regulation (207/2009) (the “CTM Regulation”) includes the owner of a later Community Trade Mark (“CTM”). Article 9(1) affords a right to the owner of a Community Trade Mark to take trade mark infringement proceedings against any “third party” using a name/logo/sign that involves a likelihood of confusion with the registered CTM.

The question for the CJEU to consider was whether the reference to a third party included a third party who owned a subsequent CTM and was using the name, logo or sign of that subsequent CTM.

Whilst the Spanish court’s request for clarification of the meaning of Article 9(1) of the CTM Regulation would appear surprising given its seemingly straightforward wording, the decision does raise interesting implications for Irish trade mark law.

By way of background, FCI, an international association established in 1911 to support dog-breeding, owns community trade mark (“CTM”) (word and figurative) No. 4438751. This CTM was registered in 2006 in classes 35, 41, 42 and 44. FCIPPR, a private association set up in 2004 to champion the preservation, promotion and development of purebred dogs, owns three Spanish national word and figurative marks as well as CTM No. 7597529 which was registered in 2010.

FCI initially opposed FCIPPR’s application to register its CTM in 2009. Having failed to pay the appropriate fee, however, the opposition lapsed and FCIPPR’s CTM was successfully registered. FCI then sued FCIPPR: (i) alleging infringement of its registered CTM; and (ii) sought a declaration of invalidity of the three national trade marks owned by FCIPPR on the grounds that they gave rise to a likelihood of confusion with FCI’s CTM. FCIPPR counterclaimed seeking: (i) a declaration that FCI’s CTM was invalid on the ground that it had been registered in bad faith and that it gave rise to confusion with one of FCIPPR’s earlier registered Spanish national trade marks.

The issue that fell to be considered was the definition of ‘third parties’, against whom, under Article 9(1) of the CTM Regulation, the holder of a registered CTM may bring infringement proceedings.

In essence, the CJEU held that Article 9(1) of the CTM Regulation must be interpreted to mean that the exclusive right of the CTM owner to prohibit all third parties from using, in the course of trade, signs that are similar to its own CTM also extended to the third party owner of a later registered CTM, without the need for the latter mark to be declared invalid beforehand.

The ruling is interesting in light of one of the provisions of the Irish Trade Marks Act 1996. Section 15(1) of the Trade Marks Act provides for a defence to trade mark infringement proceedings if the defendant can show that it is using its own registered trade mark in relation to the goods/services for which that mark is registered. In order to succeed, therefore, plaintiffs must obtain a declaration of invalidity in respect of that trade mark, even if it was registered after the trade mark on which the infringement proceedings are based.

The problem with Section 15(1) of the Trade Marks Act is that nowhere under the CTM Regulation or the Trade Mark Harmonization Directives is this defence provided for. Section 15(1) of the Trade Marks Act, therefore, appears to be at odds with EU law on the grounds that it introduces inconsistency into an otherwise, relatively harmonised system. At the same time, however, EU law does not currently provide any express exclusions of a Section 15(1) type defence. The reason behind this may be found in the recitals to Directive 2008/95/EC which states that: “It does not appear to be necessary to undertake a full scale approximation of the trade mark laws of the Member States. It will be sufficient if approximation is limited to those national provisions of law which most directly affect the functioning of the internal market.”

In what would appear to be one of the only Irish judgments in which the Section 15(1) defence arose (Allergan Inc. & Anor v Ocean Healthcare Ltd [2008] IEHC), Mr. Justice McGovern held that as the plaintiffs were the holders of registered CTMs for BOTOX, which gave them exclusive rights, the defence of the defendant under Section 15(1) (as they held a registered national trade mark, BOTOINA)could not succeed. This was on the basis that the ‘registered trade mark’ referred to in Section 15 is a trade mark registered under the Trade Mark Act and is not a CTM. It would appear, therefore, that the Section 15 defence is available to defendants solely in the context of an Irish based trade mark dispute.

Following the European Commission’s publication of a press release, in March of this year, announcing a prospective reform of the European trade mark regime it will be interesting to see whether the proposals will be further amended to reflect the outcome of this judgement and indeed, what impact the decision may have on any future Section 15(1) submissions in the Irish courts.