Junior CTM registration no defence, Court rules
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Junior CTM registration no defence, Court rules

Owners of registered Community trade marks cannot use their marks to defend infringement actions based on a senior CTM, Europe’s highest court has ruled

FCI mark

The Court of Justice of the EU ruled yesterday in a case between two dog breeding organizations, FCI and FCIPPR. Both owned similar Community trade marks. A court in Alicante asked the Court of Justice to decide whether Article 9(1) of the Trade Mark Regulation allows CTM owners to prevent other parties from using similar or identical sign, even if that later-registered mark has not been declared invalid.

The Court said that the owner of the more recent registration cannot use that registration to defend itself against claims of infringement by the owner of a senior mark.

FCIPPR-mark

The decision has important implications for the law in a number of member states, such as the UK, Spain and Ireland, which allow defendants in infringement actions to rely on their junior registrations until they have been declared invalid.

The ruling implies that such a defence should not be allowed.

The Fédération Cynologique Internationale was represented by Eric Jordi Cubells of Monereo Meyer Marinel-lo. The Federación Canina Internacional de Perros de Pura Raza was advised by S Doménech López.




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