Court of Justice, 10 March 2015, Trademark registration gives no affirmative right to use in the EU

Court of Justice, 10 March 2015, on reference from the Commercial Court Madrid, Rosa dels Vents Assessoria SL v. U Hostels Albergues Juveniles SL («UH») (C-491/14) [not yet available in English]

In its order of 10 March 2015, the CJEU confirmed that owning a trademark registration does not provide a defense in a trademark infringement matter. Whilst this was already clear for Community trademarks following the CJEU judgment in the matter Fédération Cynologique Internationale of 21 February 2013 (C-561/11), the recent order of the CJEU clarifies this for national trademark registrations. It makes clear that a junior trademark registration the use of which is claimed to infringe an earlier trademark does not need to be canceled in order for trademark infringement to be found. National provisions that provide otherwise contravene binding EU trademark law.

While not surprising for practitioners from EU jurisdictions where the mere fact that a mark was registered traditionally does not as a defense against an infringement action (such as, for example, Germany, Benelux and France), the mark that was at issue in the case before the CJEU – a stylized version of the expression «UH» – may well reflect the feelings of those from jurisdictions where, traditionally, national trademark registrations have been considered as providing a right to use the mark.

Even before the Fédération Cynologique Internationale judgment was released, UK practitioners started to muse about the applicability of s.11(1) UK TMA 1994 – commonly referred to as the registered TM defense – whereby “A registered trade mark is not infringed by use of another registered trade mark for goods or services for which the latter is registered (…)”. The Fédération Cynologique Internationale judgment highlighted that the law under section 11(1) of the UK TMA 1994 was not harmonized with CTM law with regard to having the latter mark revoked or declared invalid before issuing infringement proceedings. There was talk of the need for an amendment to the UK TMA 1994. That discussion is now moot: the law will have to be changed

In Spain, a ruling by the Supreme Court of 14 October 2014 (Denso Holding GmbH & Co vs. Productos Denso Play y Cía, S.L.) anticipated the recent CJEU order so that the position was clear; however, the Supreme Court judgment was handed down after Madrid Court decided to refer the question to the CJEU in March 2014. For further background – here are the earlier marks and the infringing mark in the case before the Spanish court: