The Romans, the Germans, the Spanish and interim TM relief

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.

An interesting problem, which goes back to Roman law ... but Justinian (right) was not available for comment

Says Carles:
"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.

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'?"
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.
The Romans, the Germans, the Spanish and interim TM relief The Romans, the Germans, the Spanish and interim TM relief Reviewed by Jeremy on Friday, October 02, 2009 Rating: 5


  1. Don't see anywhere in the UK Act a "right to use", though using a registered mark can be a defence against infringement of another registered mark (s.11 of the Act).

  2. U.S. law doesn't have any concept of a positive right to use based on registration, since all of our rights arise through use - registration only offers some procedural advantages in a lawsuit. A junior registrant will inevitably try to claim that the co-existing registrations are evidence of an absence of likelihood of confusion, but that's the best you'll get out of it. Great question, I'm hoping others contribute.

  3. As a creature of statute, in NZ a trade mark registration provides both a “positive” side and a “negative” side.

    NZ law is based on UK statute and Common Law and the current Act, the Trade Marks Act 2002, is largely based on the UK trade marks legislation (pre-harmonization).

    Section 9 of the 2002 Act defines a trade mark as being “personal property” and section 10 specifies that amongst the rights and remedies provided by the Act the owner of a registered trade mark has the exclusive right to use the registered trade mark and to authorize others to use the registered trade mark – the “positive” side.

    The “negative” side is provided for by the infringement provisions (section 89) which specify that unauthorized use of a sign which is identical or similar to a registered trade mark for the same or similar goods/services is an infringement, assuming the use complained of is likely to be taken as being use as a trade mark (a likelihood of confusion/deception is required in certain circumstances).

    Notably, the “positive” side appears to trump the “negative” side as a registered trade mark is not infringed by the use of another registered trade mark in relation to any goods or services for which that other trade mark is registered (section 93).

    While use is not a pre-requisite to registration, nor is registration a pre-requisite to obtaining rights to prevent third parties from using the same or similar trade marks. Under the Common Law an unregistered trade mark can be protected if the requisite goodwill exists (passing off) and consumer protection legislation can be relied on to prevent use of a trade mark or name if that use would be likely to deceive or cause confusion because of the reputation in another trade mark, whether that trade mark is used or not (Fair Trading Act 1986).

  4. Like NZ, the Australian Trade Marks Act 1995 also includes an explicit positive "right to use": section 20. While not qualified in section 20, it is clear that the positive right is subject to law and in any case prevails only while the registration is valid, ie not if subject to a cancellation action under section 88 on the basis that (for example) use of the mark is likely to mislead or cause confusion.

    That said, use of a registered mark is subject to a defence to infringement under section 120(e) (including when brought by the owner of a senior mark), and prior continuous use or honest concurrent use are also potentially defences to registration under section 122(fa) on the basis that this kind of use gives rise to a competing entitlement to registration in the face of the senior mark. In that regard, the positive right to use or the potential for the positive right to use based on honest concurrent use post-dating the priority date of a senior mark may still prevail over the senior user's negative right. Overall, the Australian regime for registered marks reflects the common law position, ie that multiple traders may in some cases enjoy concurrent rights in the same mark for similar goods/services.

    The positive side of the right is clearly qualified rather than absolute, but I think it makes more sense to consider the importance of the positive right to use in the context of dealings in the registered mark, where what is conveyed in an assignment of the trade mark right is not merely a right to sue for infringement in the case of third party use (the negative right) but the right to use the mark and convey all of its existing associations to the marketplace (the positive right).

  5. Very interesting to see that:

    1. Australian and NZ trade mark law uses different language from UK Trade Marks Act 1994.
    2. UK trade mark legislation seems to shy away from suggesting a positive right - perhaps influenced by traditional thinking on patents, ownership of which is understood as giving negative right - to prevent others from infringing - and not giving any positive rights - to exploit the invention.

  6. To me the factual basis as described does not question the nature of the exclusive right in a mark at all. It is rather a question about the effect of an interim injunction. The exercise of rights over property can be restricted by acts of public authorities when this is justified by other purposes. The interim injunction is an act of a public authority - the court. It restricts the defendant from exercising his right in his trade mark until the court decides the case on the merits. It is intended to prevent the defendant from causing more damages to the claimant during the course of the lawsuit by using his trademark. Therefore it always precedes the decision on the merits. In case the plaintiff wins the case his interests have been protected. In case the defendant wins, he is entitled to damages from the plaintiff because of the restrictions he has suffered being imposed an interim injunction.

    The interim injunction itself is an evidence that the right in a trade mark has a "positive" side. Because it restricts the defendant as a holder of the junior trade mark from certain uses of the mark.

  7. As Germany seems to be the source of some trouble, let me give a little background to our perception as of today:

    For a long time German courts and German scholars have circumvened the two sides of trademark rights. This is due to a procedural rule that the courts have to focus on the earlier mark and treat it as valid as long as it is registered. A defendant who wants to challenge the validity of an earlier mark has therefore to initiate separate cancellation proceedings (either before the national office or before the courts). As a consequence, the courts only focus on the question of confusion and seniority and nothing else. They consider the question of validity and/or invalidity and subsequently the right of use as an issue which falls in the competence of the office.

    From a constitutional viewpoint, a trade mark is a property right and it enjoys the constitutional protection of the respective "Grundrecht" (included in the human rights cataloque of our constitution). Such protection however, is not granted absolutely, but in relation to the needs and demands of the public. It is the task of the parliament and legislation to find a proper balance, which in some cases might lead to a complete overweight of the rights of the public in that they can even justify an expropriation (against compensation).

    As with trade marks, they have been considered to be legally designed similar to a ground property which clearly conveys a positive right to use. The German term to indicate such potential is "absolutes Recht". The respective provision in Art. 14 (1) of the German Trade Mark Act however does not use this term. According to Art. 14 (1), a trade mark right is an "exclusive" right ("ausschließliches Recht"). This is an exact implementation of Art. 5 (1) (1) of the Directive.

    The legal consequence is severe: trade marks no longer confer a (positive) right to use, but only a negative right to exclude others from use. Even this potential is limited to the cataloque of prohibitons stipulated in the law. Subsequently a trade mark - for example - does not convey the potential to prohibit private use. We must acknowledge that the legislator has restricted the trade mark property very much in that is only exclusive but no longer absolute.

  8. Many thanks to all the contributors here. It has been of great help. And very interesting as well to see all the different approaches. I will digest the information and suggest some conclusions (?) in the future.

    All the best,



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