ECJ confirms that Fédération Cynologique applies to national trademarks

European Union

On October 14 2014 the Spanish Supreme Court ruled in the DENSO case, substantially amending its previous case law relating to the principle known as 'immunity through registration'. According to that principle, a trademark owner wishing to sue the holder of another, later registered trademark for infringement was obliged to seek the invalidation of the later mark, either before or at the same time as the infringement action.

In its ruling in the DENSO case, the Supreme Court held that “the owner of a trademark registered in Spain may prevent any third party, including the holder of a later registration, from using a confusingly similar mark without first having to obtain a declaration of invalidity”. It based that conclusion, fundamentally, on the doctrine set forth by the Court of Justice of the European Union (ECJ) in its judgment of February 21 2013 in Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza (C-561/2011).

In that judgment the ECJ had considered a request for a preliminary ruling from the Spanish Community Trademark Court on the question of whether the proprietor of a Community trademark (CTM) could prevent the use of a later registered, confusingly similar CTM without first having to seek a declaration that the later CTM was invalid. The response of the ECJ was clear:

The exclusive right of the proprietor of a Community trademark to prohibit all third parties from using, in the course of trade, signs identical with, or similar to, its trademark extends to a third-party proprietor of a later registered Community trademark, without the need for that latter mark to have been declared invalid beforehand.

In Rosa dels Vents Assessoria SL v U Hostels Albergues Juveniles SL (Case C-491/14, March 10 2015), the ECJ responded to another request for a preliminary ruling, also referred by a Spanish court (the Madrid Mercantile Court No 3). The question was essentially whether the case law laid down in Fédération Cynologique was applicable when the conflict was not between two CTMs but, instead, between two national trademarks registered in Spain.

In the underlying proceedings, the marks at issue covered temporary accommodation services, among others, and consisted of the following signs:

  

Earlier mark                                                  

Later mark

Once again, the conclusion drawn was very clear. Noting that the very goal of the Trademarks Directive (2008/95/EC) was to approximate the laws of the member states relating to trademarks, the ECJ held that Article 5(1) thereof (rights conferred by a trademark) had to be interpreted in the manner established in the Fédération Cynologique case. Therefore, it was not necessary for the owner of an earlier Spanish trademark to obtain a declaration of invalidity of a later, confusingly similar Spanish trademark.

This order dispels all doubts about this issue and supports the doctrine laid down in the DENSO case in Spain, cementing the new case law marking the end of “immunity through registration” and confirming that CTMs and Spanish trademarks should be treated equally. Thus, the owner of a trademark with effect in Spain (be it a national, Community or international trademark) may bring legal action against any third party using a later mark that is confusingly similar to the earlier mark. That third party will no longer be able to hide behind a (national, Community or international) registration and it will not be necessary for the owner of the earlier mark to seek the invalidation of the later registration.

Jesús Gómez Montero, Elzaburu, Madrid

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