Crossfire

Matheson’s technology and IP law blog

Some CTMs are more equal than others…

September, 2013

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The Court of Justice of the European Union, “CJEU”, recently held that the owner of a later registered Community trade mark, “CTM”, can be held liable for trade mark infringement against an earlier registered similar or identical CTM.

 

Background

The CJEU considered whether an earlier registered CTM could be infringed by a later registered CTM in the case of Federation Cynologique Internationale “FCI” v Federacion Canina Internacional de Perros de Pura Raza “FCIPPR”, Case C 561/11. In 2006 FCI registered a CTM consisting of a globe shaped logo containing the acronym FCI. In 2008 FCIPPR registered similar Spanish trade marks containing the acronym FCI and applied for a CTM in 2010. Due to a procedural error, FCI’s attempt to oppose the application was unsuccessful and the application proceeded to registration.

In 2010 FCI filed proceedings against FCIPPR in the Community Trade Mark Court comprising two actions: an action for infringement of its CTM; and an application for a declaration of invalidity of the Spanish national trade marks. FCI also filed invalidity proceedings at OHIM against FCIPPR’s CTM but these proceedings were stayed pending the determination of the main action. Before making a ruling on the issue of invalidity and infringement in the main action, the CTM court referred a question to the CJEU asking whether the Community Trade Mark Regulation, “CTM Regulation”, confers an exclusive right on the proprietor of a Community trade mark to prevent all third parties from using similar signs to its trade mark and whether this right may be enforced against a third party proprietor of a subsequently registered Community trade mark that has not been declared invalid.

 

Decision

The CJEU held that the proprietor of an earlier CTM may bring infringement proceedings against a later registered CTM without the need for that later trade mark to have been declared invalid first. It was noted that CTMs are subject to the priority principle under which earlier CTMs take precedence over later CTMs.

The CJEU further stressed that the essential function of a trade mark is to guarantee the origin of goods and services. It noted that in order to preserve this essential function proprietors need to be able to bring infringement proceedings against later registered trade marks and that if the proprietor of an earlier mark had to obtain a declaration of invalidity prior to instituting infringement proceedings; trade mark protection would be significantly weakened.

 

Conclusion

The practical implication of the decision is that prior trade mark holders can bring infringement proceedings, even if the validity of the later mark has not been challenged.

This ruling directly conflicts with the provisions of section 15(1) of the Irish Trade Mark Act which provides that infringement proceedings can only be brought against a registered trade mark if the mark has been declared invalid.

The registration of national trade marks is harmonised under the Trade Marks Directive (2008/95/EC). As there is no equivalent provision to section 15(1) in the Directive it is likely that this provision of the Irish Act is not compliant with EU law and therefore cannot be relied upon in the Irish courts.

This development is welcome news for prior trade mark owners as it means that that those who missed the deadline to oppose similar or identical trade mark applications may bring infringement proceedings without having to file time-consuming and expensive invalidity proceedings. However, would be trade mark applicants will have to remain vigilant. Trade mark seachers will need to take account of the reality that even if a trade mark is potentially registrable that it may still be held to infringe a prior CTM owner’s rights.