On 15 November 2012, Advocate General Mengozzi (“AG”) gave an opinion in Case C‑561/11 Fédération Cynologique Internationale (“FCI”) v Federación Canina Internacional de Perros de Pura Raza (“FCIPPR”) which stated that the use of a current and valid Community trade mark (“CTM”) can infringe an earlier CTM and be challenged by the earlier CTM’s proprietor.

Under European law, the holder of a CTM has exclusive rights against third parties to use a registered mark to identify goods or services (particularly where marks of origin are involved) and these rights also provide protection against similar marks.

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

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FCI’s trademark was registered in 2005, and four years later FCIPPR applied for registration for its mark. FCI’s objection to FCIPPR’s registration was rejected for failing to provide the correct fee and FCIPPR’s CTM was registered successfully. FCI subsequently challenged the FCIPPR’s mark as infringing its prior CTM in the Spanish courts (where national law only allows trademarks to be challenged after having been declared invalid). The court then asked the European Court of Justice (“ECJ”) whether a validly registered CTM was capable of infringing an earlier CTM.

The crux of this issue according to the AG was whether an existing trademark enjoys protection against a similar mark after the other’s registration (in addition to the safeguards already provided by the registration process) and if such protection is contingent on the new mark being invalidated first. In the AG’s opinion there was no need to invalidate the subsequent trademark, as a trademark is protected against any ‘third party’, and the definition of third party includes other CTM-holders. In addition, there is no suggestion that a trademark owner’s CTM rights were accompanied by any corresponding form of immunity against the infringement of other CTMs.

WAB comment:

While not binding on the ECJ, the AG’s opinion is nonetheless highly persuasive, and advocates a common-sense approach which would make it easier for CTM holders to take action against new registered marks which infringe their own existing CTMs.  In reality, the matter should not need to reach the stage of an infringement claim, as the registration process allows ample chance to challenge new marks. However, where this opportunity is missed, or where objections are rejected on a technicality, under the AG’s approach rights-holders may find themselves relieved of the burden of first proving invalidity before bringing infringement proceedings.