On 15 November 2012, Advocate General Mengozzi of the Court of Justice of the European Union (the "ECJ") delivered his opinion in a case between the holder of a registered Community trade mark ("CTM") and the proprietor of an allegedly infringing later Community trade mark. The Advocate General is of the opinion that the holder of the earlier CTM is permitted to claim infringement without first obtaining a declaration of invalidity of the later CTM.
During a procedure on the merits before a Spanish Commercial Court, CTM holder Fédération Cynologique Internationale ("FCI") brought an action of infringement against the holder of a later CTM, Federación Canina Internacional de Perros de Pura Raza ("FCIPPR"), for trade mark infringement (Article 9 (1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark). In this case, a preliminary question was referred to the ECJ to find out whether the later CTM had to be invalidated before a claim for infringement could be brought.
The FCI had previously filed a notice of opposition against the registration of FCIPPR's CTM, but the opposition had been rejected because of a formal irregularity.
According to the Advocate General, a balance needs to be struck between the protection of the earlier and the later CTM, which are, in principle, equivalent rights. The Advocate General considered that allowing the holder of an earlier trade mark to bring infringement proceedings against the proprietor of a later registered trade mark would erode the protection afforded to the later CTM. This is because the holder of the later CTM could be prohibited from using his registered trade mark. On the other hand, if bringing an action for infringement to protect the earlier trade mark would only be possible after a declaration of invalidity of the later CTM had materialised, the protection of the earlier trade mark would be diminished. According to the Advocate General, it could take several years before the earlier CTM holder would obtain the decision of invalidity. In the meantime, both CTMs would co-exist on the market, with potentially serious negative consequences for the proprietor of the earlier CTM.
Spanish courts recognise the doctrine of "immunity by virtue of registration" ("immunidad registral"), which protects the later trade mark holder against infringement proceedings before a declaration of invalidity in respect of that trade mark has been obtained.
However, according to the Advocate General, in deciding whether the earlier CTM or the later trade mark should take precedence, the "priority principle" should be applied. According to this general principle in the field of intellectual property, the earlier exclusive right takes precedence over subsequently established rights. This principle should apply regardless of the fact that earlier CTM holders are given the possibility of filing opposition to the registration of the later mark. This ex ante protection of the earlier CTM holder does not provide a full guarantee that its exclusive right is not adversely affected by a later registered trade mark. The case at hand is an example in point because the opposition to the registration of FCIPPR's CTM had been dismissed because of procedural reasons.
Furthermore, the essential function of an earlier CTM would be undermined if its proprietor could not ban an infringing trade mark as swiftly as possible. Hence, the Advocate General is of the opinion that there is no need for the holder of the earlier CTM to invalidate the later registered CTM before claiming infringement.
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