1. Background. The Fédération Cynologique
Internationale, proprietors of Community trademark no. 4438751 FCI FEDERACION
CYNOLOGIQUE INTERNATIONALES in Classes 35, 41, 42, and 44, lodged a trademark
infringement action with Community Trade Mark Court No. 1 in Alicante against
Federación Canina Internacional de Perros de Pura Raza, who were themselves the
proprietors of various Spanish trademark registrations for FCI (one senior to
complainants' Community trademark) as well as a Community trademark
registration for FCI (figurative).
With an eye to the facts in
this case, the Community Trade Mark Court in Alicante raised the issue of
whether the rights conferred by a Community trademark registration entitle the
proprietor to prohibit the owner of another registered trademark from using
that mark or, by contrast, trademark infringement proceedings are conditional
upon first or concomitantly invalidating the defendant's Community trademark.
In the circumstances the
Spanish court decided to stay the proceedings and refer the question to the
Court of Justice for a preliminary ruling with a view to ascertaining the
actual scope of Article 9.1 of the Community Trade Mark Regulation, and in
particular whether the words "all third parties" mean that a
third party may be prevented from using his own trademark registration before
that later trademark registration has been declared invalid.
2. Findings. In paragraph 33 of the judgment (C-561/11), the
Court states explicitly that "… Article 9(1) of the Regulation does not
make any distinction on the basis of whether the third party is the proprietor
of a Community trade mark or not" and afterwards goes on to add that,
as it had already made plain in a Community design matter (judgment of 16
February 2012, Celaya, Case C-488/10), "… that provision grants the
proprietor of a Community trade mark an exclusive right to prevent 'any third
party', not having its consent, from using, in the course of trade, any signs
liable to infringe its mark".
But the Court does not stop
there. It also states that "… the proprietor of a Community trade mark
is entitled both to apply to OHIM for a declaration of invalidity of the later
Community trade mark and to oppose its use through infringement proceedings
before a Community trade mark court." The court thus views these two
actions as alternatives, as options to which the proprietor of a Community
trade mark registration is entitled.
The Court interprets the
provisions of the Community Trade Mark Regulation in light of the "priority
principle", under which the earlier Community mark takes precedence
over a later Community mark.
The court concludes by
affirming that "… if the proprietor of an earlier trade mark, in order
to prevent the use by a third party of a sign that is liable to affect the
functions of its trade mark, were required to await the declaration of
invalidity of the later Community mark held by that third party, the protection
accorded to it by Article 9(1) of the Regulation would be significantly
weakened" (paragraph 51).
3. Remarks. The judgment sets out exactly the same
position the Court took in the matter of Community designs (judgment of 16
February 2012, Celaya, Case C-488/10). While this does afford the proprietor of
an earlier trade mark registration some certainty, by the same token it is
somewhat at odds with the obligation all trademark proprietors are under to use
their mark. According to this recent judgment, the proprietor of a later
registration will be in a weak and vulnerable position when he first commences
using his mark.
However, in its judgment the
Court does not enter into any deliberation on the final consideration set forth
obiter dictum in paragraph 55 of the Advocate General's opinion, namely,
"were the Court to accept the interpretation of the term 'third party'
…, that interpretation would have also to include a third party who is the
holder of a later registered trade mark in a Member State, regardless of the
substance of the relevant national legislation."
In this regard it is important
to note that the stance taken by the Supreme Court of Spain is quite different
from the position taken by the Court of Justice. The Spanish Supreme Court
takes the view that to be able to find that infringement has taken place, and
consequently that there is liability for damages, there must also be a previous
or concomitant ruling invalidating the later infringing registration (judgment of Chamber I of the Supreme Court on 4 April 2012) (in Spanish).
Author: Luis Baz
