On 21 February 2013, in relation to Case C-561/11, Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza, the Court of Justice of the European Union (CJEU) has confirmed that actions for infringement of Community trade marks (CTMs) should be possible against third parties holding a later CTM.

BACKGROUND

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, 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 later CTM that is confusingly similar, or whether the later CTM must first be declared invalid.

Advocate General Mengozzi, in his opinion delivered on 15 November 2012, considered that actions for infringement of CTMs should be possible against third parties holding a later CTM. 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.

DECISION

The CJEU agreed with the opinion of the Advocate General. Its starting point was 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. It does not, the CJEU noted, make any distinction as to whether or not the third party is the holder of a CTM. The CJEU also found support for its position in Article 54 of the CTM Regulation, which concerns acquiescence. On the wording of Article 54, the CJEU considered that until the limitation in consequence of acquiescence takes effect after five years, the proprietor of a CTM is entitled to seek a declaration of invalidity of the later CTM and oppose its use by infringement proceedings. The CJEU also cited Article 12 of the CTM Regulation, concerning the limitations of the effects of a CTM, which it noted does not include reference to later CTMs.

COMMENT

The CJEU followed the Advocate General on the basis that Article 9(1) of the CTM Regulation grants an exclusive right to the proprietor of a CTM. This right preserves the essential function of a trade mark, which is to provide for consumers a guarantee of the origin of goods and services. The CJEU also recognised that it is not inconceivable that a mark infringing a CTM could be registered if, for example, as in the present case, an opposition failed owing to a failure to follow the procedural requirements for oppositions as contained in the CTM Regulation.

The CJEU did not, however, address the Advocate General’s views in respect of later national rights. He suggested that the priority principle should also apply in respect of national rights, irrespective of the substance of national legislation. The relationship between a registered CTM and a national mark has not been addressed properly in many EU Member States, and clarification on this point would be welcome.