Community trade mark law goes to the dogs

The Opinion of Advocate-General Mengozzi in Case C‑561/11 Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza was published on Curia today, this being a reference to the Court of Justice of the European Union (CJEU) for which this Kat has been watching carefully. Since the UK Intellectual Property Office was able to offer interested parties just a few short days over the end-of-year holiday season in which to fashion and submit their well-informed comments, he is fascinated to know whether the UK government decided to make any representations -- though he'll have to wait till the final judgment is given before the full list of representation-makers is published.

The Fédération Cynologique Internationale (‘FCI’), an international association set up in 1911 to support dog‑breeding, owned the Community trade mark on the right for certain services in Classes 35, 41, 42 and 44.  The FCI mark is reproduced above, right. The Federación Canina Internacional de Perros de Pura Raza (‘FCIPPR’), a private body set up in 2004, owned three Spanish national trade marks registered for a number of products and services included in Class 16 and which featured or included text such as FEDERACIÓN CANINA INTERNACIONAL DE PERROS DE PURA RAZA – F.C.I.,  FEDERACION CANINA INTERNACIONAL DE PERROS DE PURA RAZA and FEDERACION CINOLOGICA INTERNACIONAL + F.C.I. In February 2009, FCIPPR applied to register the logo on the left as a Community trade mark for certain products included in Class 16. In February 2010, FCI opposed. However, since it failed to pay the opposition fee, the opposition was rejected with the result that FCIPPR's Community trade mark was registered.

Unfazed by this setback, in June 2010 FCI brought before the Juzgado de lo Mercantil n. 1 de Alicante [a Community trade mark court] an action for a declaration of invalidity of the FCIPPR's Spanish trade marks, alleging a likelihood of confusion with its Community trade mark, as well an action for infringement of the latter trade mark. FCIPPR denied that there was any likelihood of confusion and, on the basis that the best kind of defence is attack, brought a counterclaim for a declaration of FCI's Community trade mark (i) as having been registered in bad faith and (ii) as creating a likelihood of confusion with FCIPPR’s earlier national trade mark consisting of the words FEDERACIÓN CANINA INTERNACIONAL DE PERROS DE PURA RAZA – F.C.I.  In November 2010, by way of retaliation, FCI applied to OHIM to cancel FCIPPR's roundel. OHIM has since stayed these proceedings.

The Juzgado de lo Mercanti took the view that, in the proceedings pending before it, it would have to establish whether the exclusive right which Article 9(1) of the Community Trade Mark Regulation [that's the bit that lists the infringing acts] gives a Community trade mark owner (in this case FCI) the right to enforce its trade mark right against a third party which is itself the proprietor of a later registered Community trade mark (here, FCIPPR) before its later trade mark has been declared invalid.  That court therefore stayed the proceedings before it and asked the CJEU:

‘In proceedings for infringement of the exclusive right conferred by a Community trade mark, does the right to prevent the use thereof by third parties in the course of trade provided for in Article 9(1) ... extend to any third party who uses a sign that involves a likelihood of confusion (because it is similar to the Community trade mark and the services or goods are similar) or, on the contrary, is the third party who uses that sign (capable of being confused) which has been registered in his name as a Community trade mark excluded until such time as that subsequent trade mark registration has been declared invalid?’

The question might seem curious to some readers.  However, some countries have provisions that deal specifically with the inability of a trade mark owner to succeed in infringement proceedings against the holder of even a later trade mark if it happens to be registered. For example, Section 11(1) of the UK's Trade Marks Act 1994 provides:

"A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered"

No equivalent provision exists in the Community Trade Mark Regulation. While this obviously troubled the referring court, that court pretty well knew what the answer to its question would be. As the AG explained at [34]:

"In its order for reference, the national court indicates that reasons of a textual, systematic, logical and functional nature argue in favour of an interpretation of Article 9(1) consistent with the interpretation established by the Court in its ... judgment in Celaya [noted by the IPKat here] in regard to designs, according to which the proprietor of a registered Community trade mark may prevent any third party from using a sign included in the categories listed in Article 9(1)(a)(b) and (c) of Regulation No 207/2009, regardless of whether or not that sign was registered subsequently by the third party as a Community trade mark....".

After an agreeably and acceptably detailed summary of he saw as the issue and the path to its resolution AG Mengozzi advised the CJEU to rule thus:

"On a proper construction of Article 9(1) ..., in proceedings for infringement of the exclusive right conferred by a Community trade mark, the right to prevent the use of that mark by third parties extends to any third party using a sign which creates a likelihood of confusion, including a third party who holds a later registered Community trade mark".

Merpel found paragraphs [56] and [57] of the Opinion particularly interesting:

"As well as being illogical and inconsistent, an interpretation other than that set forth above would in fact jeopardise the effectiveness of Article 9(1)... by making it possible to limit, on the basis of the national registration of a sign, the protection conferred on the proprietor of the earlier Community trade mark.... Moreover, in my view, a different interpretation would be at odds with the unitary nature of the trade mark, for the proprietor of the earlier Community trade mark would be accorded differing protection in the various Member States, depending on whether the national law afforded him the possibility of instigating proceedings against an infringer without awaiting the cancellation of the later national trade mark adversely affecting his rights.

To that same effect, I consider it appropriate finally to point out that, in accordance with the need, repeatedly acknowledged by the Court, for the uniform application of European Union law, the interpretation of the term ‘third party’ in Article 9(1) ... cannot but extend to the analogous term set out in Article 5(1) and (2) of Directive 2008/95/EC, which is framed correspondingly".

This would not appear to bode well for the future of s.11(1) of the British Act, or indeed s.15(1) of the Irish Trade Marks Act 1996.

This Kat would be surprised if the CJEU took a different line.

Why cats are better than dogs here and here