The IPKat's friend, scholar and MARQUES activist Carles Prat writes to him with a topic for discussion which he describes as "quite academic but which, in Spain, has reached some practical -- and undesirable -- consequences in the sense that many petitions for an interim injunction are rejected on this basis.
"1.- Let me set the factual basis first.
It is not uncommon that, in launching a trade mark infringement action (including a petition for an interim injunction) the defendant will argue that it holds itself a registered trade mark which is 'similar' (with same scope of protection) to the 'infringed' mark. This second mark is junior to the mark on which the action is based and is therefore subject to cancellation based on relative grounds. Often the trade mark infringement action is accompanied by an action to have this junior mark declared invalid.
The chain of the reasoning leading to the Spanish Courts to reject the petition for interim relief is the following:
(1) a registered trade mark is a 'right over property';
(2) a 'right over property' implies two sides: the 'negative' side, ie. the right to exclude others from using the property (the ius excluendi) and a 'positive' side, ie, a right on the part of the owner himself to use the property;
(3) if the trade mark right is a 'right over a property', the holder of the second registered trade mark, until this mark has been declared invalid (and this will not happen until the decision on the merits has been passed), enjoys a right to use his second mark (notwithstanding that it may be subject to cancellation proceedings);
(4) anyone who uses his own right may not be deemed to cause damage; 5) it can therefore not be said that the claimant and owner of the first registered trade mark enjoys a sufficiently strong legal position to obtain an interim injunction.The IPKat welcomes discussion on this issue as much as Carles does. Please post your comments below so that they can be shared with other readers.
Needless to say, the result is contrary to common sense (the trade mark is deprived of its essence, "the right to prohibit...", when this is possibly most needed) and certainly the essential function of the trade mark is not greatly taken into account here ...
2.- Coming back to the academic part of the reasoning, what I want to ascertain is where other countries stand with respect to the thesis of the 'negative side' and of the 'positive side'. And here come my thoughts:
- As far as I know this concept originated at the beginning of the XXth century and was developed by German legal scholars.
- This is probably a different discussion from the one related to the 'true' legal nature of a trade mark right: whether a trade mark right is a 'simple' right to prohibit others from using your own mark, or whether it is a full 'property right'. I am aware that the German Courts have debated this at some length (even at a constitutional level) and they have settled the question by considering that trade marks are full 'property rights'.
- These two debates interact with each other in some respects: if one believes that a trade mark right is not a 'property right' but 'only' a 'right to prohibit' (ius prohibendi or ius excluendi), the question whether such right has one or two sides is probably superfluous, since those people who thought that a trade mark right did have two sides was because they compared it with a 'normal' property right over a tangible asset which the Romans already considered it embodied a 'positive side' (ius utendi et fruendi).
- If a trade mark right has a positive side then this right is bound to be the 'right to use'.
- The Spanish Courts and, as far as I am aware, the current English law and the former German Trade Mark Act (as well as the former Spanish Trade Mark Act) contained a specific reference to this 'right to use'.
- I am under the impression, however, that EU trade mark law (Directive and CTM Regulation) either did not want to get involved with this fairly academic point or clearly established a system where a trade mark right is conceived as a mere right to exclude others: (i) art. 5 of the Trade Mark Directive (despite the use of the plural in the heading) refers to one single right (the right to prohibit or ius prohibendi); (ii) art. 5 of the CTM Regulation (which uses the singular) just refers to the ius prohibendi too; and (iii) art. 95 lifts the 'presumption of validity of a CTM' in case this is challenged, which, interestingly, might be interpreted as making reference to some sort of implicit right to use, which 'conditional' upon the mark not being challenged... A 'conditional right'? (the Directive contains no provision similar to art. 95 of the CTM Regulation).
- In my view a trade mark right does not contain a 'right of use'. In the current EU system one does not need a registration to use a sign in trade. Trade mark rights are exercised in order to exclude others. This does not of course mean that the right is not assignable etc. (ie that one can have full protection over that right 'as though it was a property right' in most respects). However, it does not provide a proper 'right to use'. There is an obligation (more correctly, a burden) to use, if one wishes to maintain the registration, but this is a different question.
- However, as we have discussed, it looks like English law and the former German law (not, I am told, the current, post-harmonisation Act, but it may well be that scholars believe that this has not changed the position) contain, or did contain, an express recognition of such 'right to use'. They do not take it to the same extreme as the Spanish Courts have (as explained above) and have considered that, if there is another mark more senior than that trade mark whose 'right of use' is being claimed, then this right of use 'ceases' to operate. The same reasoning would apply to art. 95 of the CTM Regulation (if we considered that it contains an implicit right to use). I would however wonder what is then the purpose of a 'right to use' which the holder may only exercise when he does not need it. Is this a real 'right to use'?
All this is a little too academic (but we lawyers also like these discussions, do we not?) but, as you can see, at least in Spain it has had in many cases (fortunately the Trade Mark Court in Alicante recently decided otherwise) significant practical consequences.
So my questions are as follows:
- Do trade mark rights have a 'negative' side and a 'positive side'?
- If so, does the 'positive side' include a 'right to use'?
- If it does, does it operate also when it conflicts with a senior mark?
- If so, what is the point in considering that a trade mark has a 'positive side'?"