Tuesday, 1 October 2013

Is a Registered Trade Mark a Defence?

Always good to have a shield. C info
Sally Cooper reminds us that here in the United Kingdom, we have a provision of the Trade Marks Act 1994 (section 11(1)) which says :

 "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 (but see section 47(6) (effect of declaration of invalidity of registration)"
This contrasts sharply with the the position of a Community Trade Mark in the UK. The ruling of the Court of Justice in the European Union which, in C-561/11 of 21st February 2013 [Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza] which says :
"Article 9(1) of the [ Community Trade Mark ] Regulation must be interpreted as meaning that the exclusive right of the proprietor of a Community trade mark to prohibit all third parties from using, in the course of trade, signs identical with or similar to its trade mark extends to a third-party proprietor of a later registered Community trade mark, without the need for that latter mark to have been declared invalid beforehand".

Now we have Marques reporting on 27th September 2013 a decision from the Spanish Supreme Court delivered on 24 July 2013 (Editorial Prensa Canarias, S.A. v. Radio Pública de Canarias S.A.) declaring that no infringement of trade mark rights will be established against a defendant that is using a (later) valid trade mark registration. The UK and Spain singing in harmony – who else ?

Barbara Cookson adds: Such an attitude  in Spain keeps the opposition practise in the national office vibrant. Hopefully the Fast Track Opposition procedure in the UK with a reduced £100 fee and the new Form TM7F introduced today will save some trademark claimants the trouble of having to invalidate infringing trade marks on the national register.

It seems to me to be good advice for anyone concerned about possible infringement to file their UK trade mark to establish a first line of defence. Even though the CTM at only three times the cost, covers so much more territorial, it cannot provide a shield. However if the brand bully has a CTM the UK mark is no defence either.

1 comment:

Barbara Cookson said...

Interestingly today's INTA bulletin carries an article on the equivalent issue for Community Designs which are also considered by the CJEU as no defence against infringing another registered design