A recent reference to the Court of Justice of the European Union (CJEU) could mean trade mark holders don’t have the protection they think they do.
The reference to the CJEU was made by a Spanish court in respect of a dispute between the Federacion Cynologique Internationale (FCI) and the Federacion Canina Internationale de Perros de Pura Raza (FCIPPR). Both parties used as a logo a globe with the initials ‘FCI’ in the centre.
FCI’s logo is protected by a Community Trade Mark (CTM) registered in 2006. FCIPPR’s brand is protected under three Spanish trade marks registered between 2005 and 2008 and, in 2009, it applied for a CTM for its logo. FCI filed an opposition to the application, which was rejected because FCI had failed to pay the opposition fee, and FCIPPS’s trade mark was registered.
FCI subsequently brought an action before the Spanish court for a declaration of invalidity of the national trade marks, alleging a likelihood of confusion with its CTM, and an action for infringement of its trade mark. FCI also requested that the Office for Harmonization in the Internal Market (OHIM) cancel the FCIPPR trade mark.
The Spanish court asked for an interpretation of Article 9(1) of the CTM Regulation, which allows holders of CTMs to bring infringement action against third parties, and whether the term ‘third parties’ includes holders of a later registered trade mark and, if that was the case, whether the later registration would have to be declared invalid first.
In the UK, the mark would have to be invalidated first because the process of registration allows for objections to be raised before a mark is registered (and because section 11 the UK Trade Marks Act 1994 states that a registered mark cannot be infringed by the use of another registered mark). The OHIM carries out a search and notifies the owners of earlier marks that similar marks have been applied for by third parties. It is then for the owner of the earlier mark to raise an objection.
The Attorney General (AG) was asked to give his opinion, which he gave as follows: in his view, the principle behind Article 9(1) of the CTM Regulation is to afford an earlier mark priority over any later marks, and therefore any infringement of a mark by a ‘third party’ must include holders of later registered trade marks. He further pointed out that the process of invalidating a later mark can be drawn out, so the later mark could be infringing the earlier mark for a number of years.
It will be interesting to see whether the CJEU will follow the AG’s opinion, which would make life much easier for trade mark owners who fail, for whatever reason, to prevent later registrations. Effectively, not only will the opposition period of any application become less important, but the absolute right which has been applied for may not actually exist.
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