The ECJ has held, in case C‑561/11 Fédération Cynologique Internationale (“FCI”) v Federación Canina Internacional de Perros de Pura Raza (“FCIPPR”), that the use of a valid Community trade mark (“CTM”) can infringe an earlier CTM and be challenged by the earlier CTM’s proprietor. This ruling is in-line with a previous opinion in the case given by Advocate General Mengozzi; however, as a result, Section 11(1) Trade Mark Act 1994 (“TMA”) (which requires invalidity of a later trademark be obtained before bringing infringement proceedings) appears to be incompatible with EU law.

Exclusivity of rights

A CTM holder has exclusive rights to use a registered mark under Article 9(1) of the CTM Regulation (the “Regulation”). However, Article 54 of the Regulation provides that a CTM holder loses his right to challenge a later CTM, if he knowingly acquiesced to the use of that later CTM for a period of 5 years.

This case involved FCI, an international dog breeding association dating from 1911 with a blue logo and a private association called FCIPPR which was set up in 2004 and who later registered a very similiar logo in black and white.

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FCI’s trademark was registered in 2005; four years later FCIPPR applied for registration of its mark. FCI’s objection to FCIPPR’s registration was rejected as it had failed to provide the correct fee and FCIPPR’s CTM was registered successfully. FCI subsequently challenged FCIPPR’s mark as infringing its prior CTM in the Spanish courts (where national law only allows trademarks to be challenged after a declaration of invalidity has been obtained). The Spanish courts asked the ECJ whether a validly registered CTM was capable of infringing an earlier CTM.

The ECJ noted that Article 9(1) of the Regulation does not exclude trade mark holders from the definition of a ‘third party’ (against whom trade mark rights can be asserted). Further, for Article 9 to operate alongside Article 54 of the Regulation, it must be the case that, unless the limitation based on acquiescence has expired, a CTM holder is entitled to exercise his rights against a later infringing trade mark. This result is consistent with the priority principle, in-line with which the provisions of the Regulation must be interpreted. There was also no need to obtain invalidation of the later mark to enforce rights, as such a requirement would significantly undermine Article 9, and invalidation proceedings had a different purpose and affect.

Accordingly, there was no requirement that the later mark trade mark had to be invalidated before infringement proceedings could be brought.

Comment: The ECJ’s judgment confirms the earlier opinion of Advocate General Mengozzi that one trade mark can infringe another. From a UK perspective the judgment means that s.11(1) of the TMA 1994, which provides that one trade mark cannot infringe another unless a declaration of invalidity has been obtained,  is likely incompatible with EU law and proprietors of valid trade marks which infringe earlier registered marks will lose the statutory defence s.11 TMA 1994 affords them.

The full text of the ECJ’s judgement can be found at: http://curia.europa.eu/juris/document/document.jsf?text=&docid=134112&pageIndex=0&doclang=en&mode=req&dir=&occ=first&part=1&cid=1612807