Junior CTM registration no defence, Court rules

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2026

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Cookies Settings

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.




more from across site and SHARED ros bottom lb

More from across our site

György Pintz, founder of Pintz & Partners, talks through the challenges of founding a firm and explains why lawyers and table tennis players have more in common than you might expect
Kate Nuehring Su, partner at Marshall, Gerstein & Borun, explores a successful PTAB appeal and why the Federal Circuit reached an opposite outcome on the same doctrine
From BTS to Squid Game and kimchi to memory chips, the Korean wave is reverberating around the world and IP work is also seeing a boom, say two Yoon & Yang partners
Managing IP will host a ceremony in Kuala Lumpur on November 5 to reveal the winners
Recent lateral moves raise a bigger question for full-service firms – can patent litigation remain a strategic priority when competing practices generate larger profits?
As counterfeiters grow increasingly sophisticated, Gibson Dunn is differentiating its trademark practice through a focus on payment tracing, judgment enforcement and asset recovery
Anita Polott, who is celebrating three decades at Morgan Lewis this year, reflects on career progression, stepping into unfamiliar territory, and leadership frameworks
Technical excellence remains essential, but many firms are discovering that packaging IP with complementary practice areas can unlock new clients and a stronger competitive position
As international interest in Southeast Asia grows, Sheng Rong Tng discusses how changing client demands and the firm’s multidisciplinary model are helping it compete for complex regional mandates
Todd Hopfinger, director in Sterne Kessler’s electronics practice group, says IP owners are contemplating how patent rights will be enforced as commercial activity expands beyond Earth
Gift this article