That Dirty Trick: the ECJ says "no!"

Can you really magic away
someone else's trade mark? No!

Today the Court of Justice of the European Union succeeded in magicking away the horrid spectre of an injustice which, the IPKat feared, was in danger of being perpetrated following the mammoth Opinion of Advocate General Trstenjak in Case C‑482/09 Budějovický Budvar, národní podnik v Anheuser-Busch, Inc., on a reference from the Chancery Division, England and Wales.

The facts in the case leading to this reference for a preliminary ruling can be found here, in an earlier IPKat post. The casus belli is a dirty trick played by brewer Anheuser-Busch on fellow brewer Budějovický Budvar, národní podnik, applying for a declaration of invalidity of the latter's mark, which was concurrently valid with its own, just one day before the expiry of the five-year period of acquiescence and when Budějovický Budvar had no opportunity to respond to it.

The questions relate to the issue of whether the trick in question was legal under the harmonised European Union trade mark law, not whether it was dirty, and turned mainly on the interpretation of the words of Articles 4(1)(a) and 9(1) of the Council Directive 89/104 on the approximation of trade mark laws. By Article 4(1)

"‘1. A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:

(a) if it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier trade mark is protected; ...".

As for Article 9(1), it provided that

"‘1. Where, in a Member State, the proprietor of an earlier trade mark as referred to in Article 4(2) has acquiesced, for a period of five successive years, in the use of a later trade mark registered in that Member State while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later trade mark was applied for in bad faith".

The questions posed were as follows:

"‘(1) What is meant by “acquiesced” in Article 9(1) of Directive 89/104 and in particular:

(a) is “acquiesced” a Community law concept or is it open to the national court to apply national rules as to acquiescence (including delay or long-established honest concurrent use)?

(b) if “acquiesced” is a Community law concept can the proprietor of a trade mark be held to have acquiesced in a long and well‑established honest use of an identical mark by another when he has long known of that use but has been unable to prevent it?

(c) in any case, is it necessary that the proprietor of a trade mark should have his trade mark registered before he can begin to “acquiesce” in the use by another of (i) an identical or (ii) a confusingly similar mark?

(2) When does the period of “five successive years” commence and in particular, can it commence (and if so can it expire) before the proprietor of the earlier trade mark obtains actual registration of his mark; and if so what conditions are necessary to set time running?

(3) Does Article 4(1)(a) of Directive 89/104 apply so as to enable the proprietor of an earlier mark to prevail even where there has been a long period of honest concurrent use of two identical trade marks for identical goods so that the guarantee of origin of the earlier mark does not mean the mark signifies the goods of the proprietor of the earlier and none other but instead signifies his goods or the goods of the other user?’".

The Advocate General has advised the Court that it didn't need to answer the questions, since neither the retroactive application of Article 4(1)(a) nor its application from the date of entry into force of the directive are possible in the main proceedings. Accordingly,

"... in a case such as that at issue in the main proceedings, it must be decided in accordance with national law [and not Article 4(1)(a)] whether the proprietor of an earlier trade mark may apply for a mark to be refused registration or, if registered, to be declared invalid even where there has been long-established honest concurrent use of those marks for identical goods". [This is the Europeanese for "Good luck, boys, from now you're on your own!"]

In this morning's ruling, the Court ruled as follows:

"1. Acquiescence, within the meaning of Article 9(1) of ... Council Directive 89/104 ... is a concept of European Union law [and isn't just a matter for national legislation and courts to determine on the basis of their own preferences] and the proprietor of an earlier trade mark cannot be held to have acquiesced in the long and well-established honest use, of which he has long been aware, by a third party of a later trade mark which is identical with that of the proprietor if that proprietor was not in any position to oppose that use [i.e. no naughty tricks!].

2. Registration of the earlier trade mark in the Member State concerned does not constitute a prerequisite for the running of the period of limitation in consequence of acquiescence prescribed in Article 9(1) of Directive 89/104. The prerequisites for the running of that period of limitation, which it is for the national court to determine, are, first, registration of the later trade mark in the Member State concerned, second, the application for registration of that mark being made in good faith, third, use of the later trade mark by its proprietor in the Member State where it has been registered and, fourth, knowledge by the proprietor of the earlier trade mark that the later trade mark has been registered and used after its registration.

3. Article 4(1)(a) of Directive 89/104 must be interpreted as meaning that the proprietor of an earlier trade mark cannot obtain the cancellation of an identical later trade mark designating identical goods where there has been a long period of honest concurrent use of those two trade marks where, in circumstances such as those in the main proceedings, that use neither has nor is liable to have an adverse effect on the essential function of the trade mark which is to guarantee to consumers the origin of the goods or services".

The IPKat thinks that the Court has got it just right.