The question was referred to the CJEU from a Spanish court in Alicante. It was dealing with an action for infringement brought by an international dog-breeding company FCI, against a local dog association, FCIPPR. The latter had national word marks for FCI and the former a CTM for an FCI logo.
However, due to FCI’s failure to pay its opposition fees in time, FCIPPR had also managed to register a logo CTM that was very similar to FCI’s. FCI had since initiated an invalidity proceeding against that mark at OHIM, as well as the Spanish action.
The court in Alicante asked whether a CTM holder’s rights to prevent third parties from using confusingly similar marks extended to those who had later CTMs, or whether they were excluded until that later mark had been declared invalid.
Mengozzi said that yes, the CTM right included this and the infringement action could go ahead. The opinion included discussion of the definition of a “third party” under the CTM regulation. That and the relationship between infringement and invalidity actions is apparently “a matter of lively debate among Spanish legal commentators and in Spanish case-law”. Mengozzi also noted that this topic had been brought up before – though in Germany in 1906.
The opinion is not binding on the Court of Justice, though opinions are usually broadly followed.
The opinion can be seen here.
