In response to a preliminary reference to the Court of Justice of the European Union (CJEU), Advocate General Mengozzi (the AG) has suggested that actions for infringement of Community Trade Marks (CTMs) should be possible against third parties holding a later CTM.
The reference to the CJEU was made by a Spanish court in a dispute between the Fédération Cynologique Internationale (FCI) and the Federación Canina Internacional de Perros de Pura Raza (FCIPPR). Both parties used as a logo a stylised image of a globe with the initials “FCI” featuring prominently in the centre.
FCI’s logo is protected by a CTM that was registered in 2006. FCIPPR’s logo is protected by a number of Spanish national marks. In 2009, FCIPPR applied for a CTM for its logo. FCI filed an opposition against this application, which was rejected on procedural grounds on account of FCI’s failure to pay the opposition fee. On 18 June 2010, FCI sought a declaration of invalidity for FCIPPR’s national marks and an action for infringement based on FCIPPR’s use of its CTM. This led the Spanish court to ask for guidance from the CJEU as to whether the proprietor of a CTM can prevent the use of a latter CTM that is confusingly similar, or whether the latter CTM must first be declared invalid.
The AG began by referring to his opinion in Celaya Emparanza v Galdos International C-488/10, which addressed much the same question in relation to Community Registered Designs (CRDs). The AG noted that, unlike in respect of the application for a CTM, there was no opposition period for CRDs. This reduces the chances that conflicting CTMs would be registered. In Celaya, the AG proposed (and the CJEU followed) that an earlier CRD can be infringed by one registered later. The differences between the CTM and design registration process were not sufficient for the AG to change his view.
The AG noted that Article 9(1) of the CTM Regulation, which sets out the exclusive rights of the proprietor of a CTM, refers to preventing any third party from using a conflicting sign. If, he reasoned, the proprietor of a later CTM was protected from infringement proceedings on account of its registration, then a CTM no longer confers absolute protection on its holder. This would also undermine the priority principle. The AG went further and suggested that this principle should apply also in respect of national rights, irrespective of the substance of national legislation.
In practice, conflicts between CTMs should occur rarely as the opposition period gives the holder of an earlier right the opportunity to object to a later application. In many respects, if this opinion is followed, the importance of the opposition period will diminish, as existing right holders will be given a subsequent opportunity to object to the mark. This, of course, should be of concern to applicants, as the absolute right they have applied for may still be vulnerable to attack on the basis of a third party right, even after registration.
Perhaps of further concern to right holders are the AG’s comments in respect of national rights. The relationship between a registered CTM and national mark has not been addressed properly in many Member States, and clarification on this point would be welcome.