The Trade Marks and Designs Registration Office of the European Union
1. Parties to the case
The Fédération Cynologique internationale (the Applicant, FCI) is an international association owner of CTM nº 443 8751 registered in 2006 for the following figurative sign:
The CTM is registered for services in classes 35, 41, 42 and 44.
The Federación Canina Internacional de Perros de Pura Raza(FCIPR) is the proprietor of many Spanish trademarks registered in 2005, 2008 and 2010 for the following figurative sign:
The Spanish trademarks are registered for goods in classes 16 and services in classes 41 and 44.
On 18 June 2010, FCI filed proceedings against FCIPPR before the Juzgado de lo Mercantil n° 1 de Alicante y n° 1 de Marca Comunitaria (Commercial Court No 1 of Alicante and Community Trade Mark Court No 1) (Spain) comprising two actions:
FCIPPR denied that there was any likelihood of confusion between the signs which it uses and Community trade mark No 4438751 held by FCI, and, by way of a counterclaim, sought a declaration that the Community trade mark was invalid on the ground that it had been registered in bad faith and that it gave rise to confusion with the earlier national trade mark, No 2614806.
The Juzgado de lo Mercantil n° 1 de Alicante y n° 1 de Marca Comunitaria takes the view that the dispute in the main proceedings raises the question as to whether the exclusive right which Article 9(1) of the Regulation confers on the proprietor of a Community trade mark, in this case FCI, may be enforced against a third party which is the proprietor of a subsequently registered Community trade mark, in this case FCIPPR, as long as the latter trade mark has not been declared invalid.
In those circumstances, the Juzgado de lo Mercantil n° 1 de Alicante y n° 1 de Marca Comunitaria decided to stay the proceedings and to refer to the Court the following question for a preliminary ruling.
3. The questions asked
‘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 [the Regulation] 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?’
By its question, the national court is asking, essentially, whether Article 9(1) of the Regulation must be interpreted as meaning that the exclusive right of the proprietor of a Community trade mark to prevent 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 Community trade mark without the need for that latter mark to have been declared invalid beforehand.
4. Findings of the Court
The ECJ notes that Article 9(1) of the Regulation does not make any distinction on the basis of whether the third party is the proprietor of a Community trade mark or not. Thus, that provision grants the proprietor of a Community trade mark an exclusive right to prevent ‘any third party’, not having its consent, from using, in the course of trade, any signs liable to infringe its mark (see, by analogy, the judgment of 16 February 2012 in Case C‑488/10 Celaya Emparanza y Galdos Internacional  ECR I-0000, paragraphs 33 and 34).
The Court gave consideration to Article 54 of the Regulation and Interpreting this provision the Court held that, before the limitation in consequence of acquiescence takes effect, the proprietor of a Community trade mark is entitled both to apply to OHIM for a declaration of invalidity of the later Community trade mark and to oppose its use through infringement proceedings before a Community trade mark court.
Finally, the Court notes that neither Article 12 of the Regulation, relating to the limitation of the effects of neither a Community trade mark, nor any of its other provisions provides for an express limitation of the exclusive right of the proprietor of a Community trade mark in favour of the third-party proprietor of a later Community trade mark.
The answer to the question raised by the Spanish CTM court is therefore that it is thus apparent from the wording and the general approach of Article 9(1) of the Regulation that the proprietor of a Community trade mark must be able to prevent the proprietor of a later Community trade mark from using that latter trade mark.
The Court reminded that it has already held, in the context of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), that actions alleging infringement and actions for a declaration of invalidity are distinguished in terms of their object and effects, with the result that the fact that it is possible for the holder of an earlier registered Community design to bring infringement proceedings against the holder of a later registered Community design cannot render the bringing of an application for a declaration of invalidity against the latter before OHIM devoid of all purpose (Celaya Emparanza y Galdos Internacional, paragraph 50).
For these reasons the Court held that the answer to the question referred is that Article 9(1) of the Regulation 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.
5. CommentsTogether with the Celaya Emperanza y Galdos Internacional’s judgment on RCD, the Court has now given an interpretation of Article 9 in a completely opposite direction than the Tribunal Supremo Español, who based on the theory of “inmunidad registral” held for many years that it is enough to enjoy registration of a CTM to avoid being attacked in a counterfeiting action; the proprietor of an earlier CTM was obliged under this jurisprudence first to go for the cancellation of the CTM in front of the office. The Tribunal Supremo will have to change its interpretation of the Regulation following this clear judgment.