Unknown and Unappreciated: Earlier Non-Trademark Rights as Grounds for Invalidity

Article 60(2) of the European Union Trade Mark Regulation (EUTMR) provides for one of the most unknown and unappreciated grounds for invalidity, enabling third parties to apply for the invalidation of an EU Trade Mark based on rights other than trademark rights, such as personality rights, design rights, and copyright. The only condition is that the party applying for invalidation can prohibit the use of that trademark pursuant to an earlier right recognized by EU law or national law.

This was the focus of an INTA roundtable hosted by INTA member Van Innis & Delarue in Antwerp, Belgium, on March 11. Anthony Van der Planken and Dieter Delarue, from Van Innis & Delarue (Belgium), presented the topic and led a discussion with the audience.

Mr. Van der Planken explained that Article 60(2) often creates challenges for the EU Intellectual Property Office (EUIPO), which has a long experience with trademarks and designs but less with the many other earlier rights protected in the 27 EU member states. That is why both the EUTMR and the EU Court of Justice’s case law require invalidity applicants to correctly inform the EUIPO. They must not only provide the relevant national legislation, but also explain thoroughly why this legislation allows them to prevent the use of the contested mark. In practice, most applications for invalidity based on Article 60(2) fail because the applicant did not provide sufficient information on the relevant legislation.

Three conditions must be fulfilled for an application for invalidity to succeed:

1. First, the applicant must prove that an earlier right exists.
2. Second, the applicant must show that it is entitled under national law to invoke that earlier right. The applicant must not be the proprietor of the earlier right though. It suffices that the relevant national law allows the applicant to bring civil infringement proceedings. Mr. Van der Planken pointed out that Belgian law is very flexible in this respect, as even resellers of copyright-protected works can bring proceedings.
3. Finally, the applicant must prove that the earlier right allows it to prohibit the use of the contested mark.

The presentation was followed by an interesting discussion between the participants, who shared their experiences with Article 60(2) and some broader considerations on the interface between trademark law and copyright law. One participant said it could be helpful to first obtain an injunction against the use of the contested mark at the national level. Once a national court has granted an injunction, the EUIPO will probably have no choice but to follow suit and cancel the trademark. Another participant underscored the fact that representatives of defendants should always do their own research on the national law invoked, as most cancellation applicants will only cite national decisions that help their case and not those decisions that could undermine their case.