CJEU confirms CTM infringement not dependent on invalidation

The Court of Justice of the EU (CJEU) has ruled on whether Community trademark (CTM) owners may pursue infringement proceedings against third parties owning subsequent similar marks, regardless of whether the later mark has been invalidated.

The matter was referred to the CJEU by a Spanish trademark court, which was unsure of how to define ‘third parties’ against whom CTM holders can bring infringement proceedings under Article 9 of EU Council Regulation 207/2009.

The referring court said Article 9 could be interpreted as meaning that CTM owners do not have the right to bring infringement proceedings against owners of a subsequent mark unless the mark has been declared invalid – the interpretation adopted by Spain’s Supreme Court – or that CTM rights “can be enforced against any third party…even if the latter mark has not previously or simultaneously been declared invalid.”

On Thursday, 21 February, the CJEU  ruled that Article 9 must be interpreted as meaning “that the exclusive right of the proprietor of a Community trade mark to prohibit all 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 Community trade mark, without the need for that latter mark to have been declared invalid beforehand.”

“Despite the safeguards provided by the procedure for registering Community trademarks, it is not entirely inconceivable that a sign that is liable to infringe an earlier Community trademark may be registered as a Community trademark,” said the court.

The referring case is Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raz – a trademark dispute between two organisations holding national and Community marks for products and services related to dog breeding and dog competitions and shows.

Phillip Harris, a former president of the UK Institute of Trade Mark Attorneys, speaking on behalf of the organisation, said that the case will not change CTM practice but provides further clarification on the issue, as well as highlighting a divergence between UK and Spanish national laws and EU legislation.

“In Spain, it was assumed that if you had a later registered mark, it had to be invalidated before you could infringe an earlier mark. In UK law, there is also a provision that a national trademark is not infringed by the use of a later mark until or unless it has been invalidated.

"But as far as I’m aware, there is no provision whatsoever for this under EU CTM legislation, and the CJEU has made clear in its ruling that infringement is not dependent on having a mark invalidated,” he said.