In its recent preliminary ruling in Case C-561/11 the Court of Justice of European Union (“CJEU”) ruled that actions for infringement of Community trade marks (“CTM”) should be possible against third parties holding a later CTM.

The case was a dispute between the Fédération Cynologique Internationale (“FCI”) and the Federación Canina Internacional de Perros de Pura Raza (“FCIPPR”). Both parties used a picture of a globe with the initials “FCI” as a logo. FCI’s logo was protected by a CTM registered in 2006, and FCIPPR’s logo was protected by a number of Spanish national marks. In 2009, FCIPPR applied for a CTM. In response, FCI filed an opposition, but it was rejected on procedural grounds since FCI had failed to pay the opposition fee. Later, FCI sought a declaration of invalidity for FCIPPR’s national marks and filed an action for infringement based on FCIPPR’s use of its CTM. Consequently, the Spanish court asked for guidance from the CJEU as to whether the proprietor of a CTM can prevent the use of a later CTM that is confusingly similar, or whether the later CTM must first be declared invalid.

The CJEU concluded that Art. 9(1) of Council Regulation (EC) No 207/2009 must be interpreted as meaning that the exclusive right of the proprietor of a CTM to prohibit all third parties from using, in the course of trade, signs identical with or similar to its trade mark extends to a third-party proprietor of a later registered CTM, without the need for that latter mark to have been declared invalid beforehand. The contrary interpretation would have significantly weakened the protection granted by Art. 9(1), and thus could not be acceptable.