Valid Community Trade Mark Not Full Protection Against Action

November 21, 2013

Valid Community Trade Mark Not Full Protection Against Action

You have a registered trade mark – so you think there’s no risk of having an action brought against you for trade mark infringement. But would you be right?

A recent case heard by the Court of Justice of the European Union (CJEU) suggests not. It involved a firm with a registered trade mark that found itself facing an action for infringement of another organisation’s trade mark. Both organisations, which have interests in canine events, have trade marks incorporating the initials ‘FCI’ within a circle representing the globe and with grid lines indicative of longitude and latitude.

One firm had registered its trade mark as a Community Trade Mark (CTM) in 2005. It brought the action. The other had registered several national trade marks, one of which was also registered as a CTM in 2010.

The Court had to consider as a preliminary issue whether the ‘exclusive right’ which the relevant CTM regulations confer on the proprietor of a CTM ‘may be enforced against a third party which is the proprietor of a subsequently registered CTM’, where the latter trade mark has not been declared invalid.

The CJEU decided that it could. There was no need to have the subsequently registered CTM declared invalid before an action for infringement could be brought.