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ECJ confirms that use of registered mark can infringe earlier registered mark
Practical Law UK Legal Update 1-524-3352 (Approx. 5 pages)
ECJ confirms that use of registered mark can infringe earlier registered mark
by PLC IPIT & Communications
| Published on 21 Feb 2013 • European Union |
The ECJ has ruled that the proprietor of a Community trade mark (CTM) can enforce it against infringers even if the infringing acts arise from the exercise of their rights to use a later CTM. (Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza, Case C 561/11, 21 February 2013.) Free access
Speedread
The ECJ has confirmed the Advocate General's view that a Community trade mark (CTM) proprietor can sue for infringement of the CTM arising from the use of a later-registered CTM, without the need for the later mark to have been declared invalid beforehand. The court considered that the CTM registration procedure was not conclusive and that it was not entirely inconceivable that a sign could be registered as a CTM even though its use was liable to infringe an earlier CTM; for example, where the owner of an earlier conflicting CTM had failed to file an opposition or had filed an opposition with procedural faults that led to it being rejected before any examination had been made of its merits. Furthermore, to rule that a CTM proprietor had to await the outcome of invalidity proceedings before it could sue for infringement would significantly weaken the protection given to CTMs.
The practical effect of this ruling in the UK is to confirm that trade mark proprietors who consider that a third party's use of its later-registered trade mark is an infringement of their own mark can potentially bring successful infringement proceedings, even if they have not challenged the validity of the later mark. This will be welcome news for such proprietors as, in many cases, it will mean that injunctive relief will be available more quickly than it has been in the past, when section 11(1) of the Trade Marks Act 1994 required proprietors to have the later mark revoked or declared invalid before they could bring infringement proceedings for its use. The section 11(1) defence must now be regarded as non-compliant with EU law and therefore unavailable.
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Background
Article 9(1) of the Community Trade Mark Regulation (207/2009/EC) (CTM Regulation) provides that a Community trade mark (CTM) confers exclusive rights on its proprietor and that those rights are enforceable against "all third parties". For more information about trade mark proprietors' rights against infringers, see Practice note, Trade marks: Infringement and offences.
Article 54 of the CTM Regulation provides that, where the proprietor of a CTM has acquiesced for a period of five successive years in the use of a later CTM in the Community while being aware of such use, he is no longer entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark.
Section 11(1) of the Trade Marks Act 1994 (TMA) provides that a registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered, unless and until the later mark is declared invalid. There is no equivalent provision in the CTM Regulation or the Trade Marks Directive (2008/95/EC), which harmonises the law relating to registration of trade marks on the national registers of EU member states.
Facts
The Fédération Cynologique Internationale (FCI), an international association set up in 1911 to support dog breeding, obtained CTM registration of a logo containing the acronym FCI in 2006. The Canina Internacional de Perros de Pura Raza (FCIPPR) was the owner of several Spanish-registered word marks relating to its name; in 2009, it applied to register a similar figurative logo containing the initials "FCI". FCI opposed that application in February 2010, but its opposition failed because it did not pay the opposition fee in time. FCIPPR's logo therefore proceeded to registration in September 2010.
In June 2010, FCI applied to the Office for Harmonisation in the Internal Market (OHIM) for a declaration of invalidity of FCIPPR's word marks, based on relative grounds arising from its earlier registered logo. It also alleged infringement of its logo. FCIPPR counterclaimed for a declaration of invalidity of FCI's registered logo on the grounds of bad faith and likelihood of confusion with an earlier Spanish mark registered by FCIPPR.
In November 2010, FCI applied to OHIM for a declaration of invalidity of FCIPPR's logo registration, but in September 2011 OHIM stayed that action pending the outcome of the Spanish court case.
The Spanish court stayed the proceedings before it while it referred a question to the ECJ for a preliminary ruling. The question was framed as follows:
"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 Regulation No 207/2009] 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?"
In November 2012, the Advocate General (AG) gave an opinion in which he advised the ECJ to rule that the proprietor of a CTM can enforce it against infringers even if the infringing acts arise from the exercise of their rights to use a later CTM, and that there is no requirement for the earlier trade mark proprietor to first have that later mark declared invalid before initiating infringement proceedings (see Legal update, Advocate General gives opinion that use of registered mark can infringe earlier registered mark).
Decision
Agreeing with the AG, the ECJ has ruled that the exclusive right of a CTM proprietor to prohibit third parties from using, in the course of trade, signs identical with or similar to its trade mark extends to a third-party proprietor of a later-registered CTM, without the need for that latter mark to have been declared invalid beforehand.
The court's reasoning can be summarised as follows. (A further technical ground was raised which related to the admissibility of the referred question. That ground is not considered in this update.)
The court first looked at the relevant legislative wording, observing that:
- Article 9(1) of the CTM Regulation did not make any distinction on the basis of whether the third party was a CTM proprietor or not.
- It was apparent from the wording of Article 54 that, before the limitation in consequence of acquiescence took effect, the proprietor of a CTM was entitled both to apply to OHIM for a declaration of invalidity of the later CTM and to oppose its use through infringement proceedings.
- Neither Article 12 nor any other provision of the CTM Regulation provided for an express limitation of the exclusive right of a CTM proprietor in favour of the third-party proprietor of a later CTM.
From these provisions, the court concluded that the proprietor of a CTM must be able to prevent the proprietor of a later CTM from using it, regardless of the fact that that the proprietor of the later trade mark also has the benefit of an exclusive right under Article 9(1).
However, it then went on the say that the provisions of the CTM Regulation had to be interpreted in the light of the priority principle, under which an earlier CTM takes precedence over a later CTM. It was clear from the CTM Regulation that, in the event of a conflict between two marks, the mark that was registered first was presumed to have met the conditions required to obtain Community protection before the mark that was registered second.
However, the court did not consider that use of the later mark could only be challenged by way of a challenge to validity. Although the CTM registration procedure included a substantive examination, including the opportunity for third parties to object on relative grounds, this was not conclusive, and it was not entirely inconceivable that a sign could be registered as a CTM even though its use was liable to infringe an earlier CTM. This situation could arise, for example, where the proprietor of the earlier CTM had not filed a notice of opposition or (as was the case in the main proceedings) where an opposition had not been examined on its merits by OHIM by reason of non-compliance with procedural requirements.
Furthermore, the ECJ had already held in the context of the Community Designs Regulation (6/2002/EC) that infringement claims and invalidity claims had different objectives and effects, and that even if it was possible for the holder of an earlier-registered Community design to bring infringement proceedings against the holder of a later-registered Community design, this did not render an application for a declaration of invalidity against the latter devoid of all purpose (Celaya Emparanza y Galdos Internacional, case C-488/10; see Legal update, ECJ rules on whether use of registered Community design can infringe earlier registered design). The same principle applied in the present context: the possibility that the proprietor of an earlier CTM could bring infringement proceedings against the proprietor of a later CTM did not mean that there could be no purpose either in the bringing of an application for a declaration of invalidity before OHIM, or in the mechanisms for prior control that were available under the CTM registration procedure.
It was also important to emphasise the need to preserve the essential function of the trade mark, which was to guarantee to consumers the origin of the goods. In that regard, the ECJ had repeatedly held that the exclusive right under Article 9(1) of the CTM Regulation was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor of the mark: that was to say, to ensure that the trade mark could fulfil its own function. As the AG had observed, if the proprietor of an earlier trade mark, in order to prevent the use by a third party of a sign that was liable to affect the functions of its trade mark, were required to await the declaration of invalidity of the later CTM held by that third party, the protection accorded to it by Article 9(1) of the CTM Regulation would be significantly weakened.
Comment
The ECJ has followed the Advocate General in upholding the primary importance of the exclusive right to sue for infringement. It is now clear that the defence under section 11(1) of the TMA is not compliant with EU law and cannot be relied on in the courts. The practical effect of this ruling in the UK is to confirm that trade mark proprietors who consider that a third party's use of its later-registered trade mark is an infringement of their own mark can potentially bring successful infringement proceedings, even if they have not challenged the validity of the later mark. This will be welcome news for such proprietors as, in many cases, it will mean remedies can be secured more quickly than has previously been the case.