On February 21 2013 the European Court of Justice (ECJ) issued a much-anticipated judgment in Case C-561/11 in response to a preliminary ruling by Alicante Commercial Court No 1, acting as the Spanish Community trademark court.

Féderation Cynologique Internationale, which holds the Community word and figurative mark FCI, registered in respect of services relating to dog shows, filed proceedings before the commercial court. The proceedings were led against Federación Canina Internacional de Perros de Pura Raza, which uses and is the proprietor of a word and figurative mark that includes the letters FCI.

In the main proceedings, the plaintiff brought two actions for:

  • infringement of its Community trademark; and
  • a declaration of invalidity of several of the defendant's Spanish trademarks which contained the letters FCI.

The defendant is also the proprietor of a Community trademark consisting of the disputed sign, which was registered after the plaintiff's mark. The EU Community Trademark Regulation(1) requires that the invalidity of a Community trademark be declared:

  • on application to the Office for Harmonisation in the Internal Market (OHIM); or
  • on the basis of a counterclaim in infringement proceedings (Articles 52 and 53).

In this case, the invalidity of the later Community trademark had been requested before OHIM, but the procedure was suspended due to commencement of the main proceedings.

These circumstances led the commercial court to assess the scope of protection that one Community trademark has against another later Community trademark if the later registration is not cancelled.

Article 9(1) of the Community Trademark Regulation establishes that a Community trademark confers exclusive rights on the proprietor, which is entitled to prevent any third parties from making unauthorised use of the mark, or another similar mark which may be damaging to its mark, during the course of trade.

The commercial court considered that under Article 9(1), the concept of a third party may be interpreted in two different ways and thus referred the following question to the ECJ for a preliminary ruling:

"In proceedings for infringement of the exclusive right conferred by a Community trade mark, does the right to prevent the use thereof by third parties in the course of trade provided for in Article 9 (1) of the Regulation extend to any third party who uses a sign that involves a likelihood of confusion (because it is similar to the Community trade mark and the services or goods are similar) or, on the contrary, is the third party who uses that sign (capable of being confused) which has been registered in his name as a Community trade mark excluded until such time as that subsequent trade mark registration has been declared invalid?"

The referring court highlighted that certain Spanish case law states that a Community trademark does not entitle its proprietor to prevent the holder of a later Community trademark from using the later mark until the preceding trademark has been declared invalid.

In order to answer the referred question, the ECJ established the following:

  • Article 9(1) does not make a distinction on the basis of whether the third party is the proprietor of the Community trademark. This article grants the proprietor of a Community trademark an exclusive right to prevent any third party from using any signs that are liable to infringe its mark.
  • Article 54 states that the proprietor of a Community trademark which has acquiesced to the use of a later Community trademark for a period of five successive years is no longer entitled either to apply for invalidity of the later trademark or to oppose its use. Thus, during this period, the proprietor is entitled both to apply for a declaration of invalidity and to oppose use of the mark through infringement proceedings before a Community trademark court.
  • Article 12, which relates to the limitation of the effects of a Community trademark, does not provide for an express limitation of the proprietor's exclusive rights in favour of the third-party proprietor of a later Community trademark.

Based on a study of the regulation, the ECJ held that the proprietor of a Community trademark must be able to prevent a proprietor of a later Community trademark from using that later trademark, and clarified that such a conclusion is not called into question by the ownership of a later Community trademark.

The judgment clarifies that the regulation must be interpreted in light of the priority principle. In addition, it highlights that the protection granted to a proprietor in order to ensure that a trademark can fulfil its function would be significantly weakened if the proprietor of an earlier Community trademark were required to await the declaration of invalidity of the later Community mark in order to prevent use of a sign by a third party.

The ECJ concluded that the definition of 'third party' in Article 9(1) extends "to a third-party proprietor of a later registered Community trademark, without the need for that latter mark to have been declared invalid beforehand".

This judgment is in line with the findings in Celaya Emparanza y Galdos Internacional,(2) within the context of the Community Design Regulation,(3) in which a preliminary ruling was raised by the same referring court.

For further information on this topic please contact Dalia Ferrando at Grau & Angulo by telephone (+34 93 202 34 56), fax (+34 93 240 53 83) or email (d.ferrando@gba-ip.com).

Endnotes

(1) 207/2009/EC, February 26 2009.

(2) February 16 2012, Case C-488/10.

(3) 6/2002/EC, December 12 2001.