CTM Court rejects doctrine of 'immunity by virtue of registration'

Hugo Boss Trademark Management GmbH & Co KG filed an action for a declaration of invalidity of the B055 mark, as well as an action for infringement of its BOSS trademarks, against the entity responsible for the importation and marketing in Spain of products bearing the B055 mark. At the same time, it applied for the adoption of precautionary measures. By its decision of June 27 2011, the Commercial Court Number 2 of Alicante granted the measures requested in the interim injunction proceedings.

The defendant, alleging that this decision was not in accordance with the law, appealed to the Community Trademark Court. Its defence focused mainly on the fact that the sign B055 was registered as a later Spanish trademark in its name. Thus, it argued, infringement proceedings could not be successfully brought since it was using its own registered trademark.

Article 34 of the Spanish Trademarks Act 17/2001 confers on the holder of a Spanish trademark the right to use it and to prohibit others from using it without its consent, in contrast to Article 9 of the Community Trademark Regulation (207/2009), which confers only the right to prohibit the use of a mark. This has generated a doctrinal and jurisprudential debate in Spain regarding the possibility of invoking a registered trademark to defend oneself against an infringement action brought by the proprietor of an earlier right. In this respect, case law by the Supreme Court, known as the doctrine of ‘immunity by virtue of registration’, considered that a national trademark conferred on its holder an almost absolute right to use it - unless the trademark was declared invalid, its use could not be regarded as unlawful.

This doctrine was recently qualified by the Supreme Court judgment of April 4 2012, which, together with another decision rendered on June 29 2012, provided the possibility of filing, at the same time, an action for a declaration of invalidity of the defensive (later) trademark and an action for infringement of the earlier trademark. Moreover, the Supreme Court noted that, under Article 54 of the Trademark Act, a declaration of invalidity, whatever its reason, will have retroactive effects (ex tunc); consequently, the cancelled trademark will be deemed to never have had any effect, including the right to use it.

In its decision of November 29 2012, the Community Trademark Court, reversing the previous case law recognising the doctrine of ‘immunity by virtue of registration’, and in line with the most recent decisions of the Supreme Court, rejected the defendant's allegation that its trademark registration prevented the prima facie analysis of the trademark infringement claim in the interim injunction proceedings.

The court, invoking the most recent Supreme Court case law on the subject, noted that, in the main proceedings, plaintiff Hugo Boss had brought, together with the infringement action, an action for a declaration of invalidity of the defendant’s defensive trademark. If deemed invalid, such registration would be considered never to have been valid and, therefore, it would never have had the effects specified in the law, including the right to use it. Therefore, the court had no objection to the possibility that the final judgment in the main proceedings could declare that the plaintiff’s mark had been infringed during the period within which the defendant used its own trademark.

In addition, the court relied on the November 15 2012 opinion of Advocate General Paolo Mengozzi in the context of a reference for a preliminary ruling by the Commercial Court Number 1 of Alicante in a case concerning the doctrine of ‘immunity by virtue of registration’ at the Community level (Fédération Cynologique Internationale (Case C-561/11)).

The same question, but this time in relation to Community designs, had also been the subject of an opinion by Advocate General Mengozzi and of a decision by the Court of Justice of the European Union (ECJ) in Celaya Emparanza y Galdos Internacional (Case C-488/10), in which it was concluded that the proprietor of a registered design should be able to bring an infringement action against the owner of a later registered design without first having to file an action for a declaration of invalidity of the later design.

Mengozzi reached the same conclusion regarding Community trademarks (CTM) in Fédération Cynologique: in proceedings for infringement of a CTM, the right to prevent use of that mark extends to any third party, including a third party which holds a later registered CTM. As explained by the advocate general, there is a conflict between the right of the holder of the earlier mark to prohibit its use and the right of the holder of the later mark to use it. This clash should be resolved based on the priority principle, under which the earlier right takes precedence over the later right.

Notably, the advocate general advised that this interpretation should be extended to national trademarks, regardless of the substance of the relevant national legislation. A different interpretation would make it possible to limit, on the basis of a national registration, the protection conferred by an earlier CTM, and would be at odds with the unitary nature of the CTM.

Although the case is still pending before the ECJ, the Spanish Community Trademark Court followed this approach. It remains to be seen whether the ECJ will do the same.

Carlota Viola, Grau & Angulo, Barcelona