INTA Files Amicus on Co-Existence of Trademarks and Earlier Non-Registered Rights

INTA filed an amicus brief on August 16 before the Court of Justice of the European Union (CJEU) in a case concerning limitations of the effects of a registered trademark and, in particular, the co-existence of earlier unregistered rights of local significance with later registered national trademarks. Case C-112/21, Meering Touringcars Amsterdam B.V. v. V.O.F. Classic Coach Company and Others was referred by the Hoge Raad der Nederlanden (the Supreme Court of the Netherlands).

Background

The dispute centers on whether Meering Touringcars Amsterdam can invoke its later trademark against Classic Coach Company’s older trade name, or whether it is barred from doing so since Classic Coach Company has an older unregistered right of mere local significance (in this instance, a trade name).

The case concerns both registered trademark infringement and trade name infringement, with different defenses put forward for each claim. INTA engaged only with the registered trademark infringement aspects of the case, which involve the interpretation of the term “earlier right” in Article 6(2) of the Trademarks Directive 2008/95/EC (the Old Directive), which is identical to the corresponding Article 14(3) of the currently in force Directive 2015/2436 (the New Directive).

Article 6(2) provides that a registered trademark “shall not entitle the proprietor to prohibit a third party from using, in the course of trade, an earlier right which only applies in a particular locality if that right is recognized by the laws of the Member State in question and within the limits of the territory in which it is recognized.”

The questions referred to the CJEU were as follows:

1. For the purposes of determining whether there is an “earlier right” of a third party …
   1. Is it sufficient that, prior to the filing of the trademark, the third party had made use in the course of trade of a right which is recognized by the laws of the member state in question; or
   2. Is there a requirement that that third party, on the basis of that earlier right, under the applicable national legislation, is entitled to prohibit the use of the trademark by the trademark holder?
2. In answering Question 1, is it also relevant whether the trademark holder has an even earlier right (recognized by the laws of the member state in question) in relation to the sign registered as a trademark and, if so, is it relevant whether the trademark holder may, on the basis of that even earlier recognized right, prohibit the use by the third party of the alleged earlier right?

INTA’s Key Arguments

In its brief, INTA submitted that the earlier rights of Articles 6(2) of the Old Directive and 14(3) of the New Directive shall only be invoked to the extent they are “legally” obtained and enforceable. In other words, if the earlier right was “illegally” acquired (that is, for example, it infringed an unregistered preceding right of the trademark applicant), the earlier rights of Articles 6(2) of the Old Directive and 14(3) of the New Directive cannot be forced by law to co-exist with the later trademark registration, to the extent the former were “illegally” acquired. In that case, the trademark registration owner shall have the right to oppose the use of the local unregistered right and shall not be bound by the co-existence obligation of the law.

INTA also argued that the rule of co-existence comes back into play should that unregistered right be “illegally” acquired and unenforceable, infringing an even earlier right, but the owner of the even earlier right has acquiesced to its use or estoppel applies.

The Association’s views on the questions referred were that:

• The circumstances described in question 1a) are not sufficient to establish that an “earlier right” exists. The right must also have been acquired “legally”;
• There is no requirement of the type described in question 1b). This is because earlier rights of mere local significance under Article 6(2) of the Old Directive may not prohibit the use or registration of later trademarks. However, there is a requirement that such earlier right is a legally acquired right by the third party; and
• It is also relevant whether the trademark holder has an even earlier right (recognized by the laws of the member state in question) in relation to the sign registered as a trademark, and it is relevant whether the trademark holder may, on the basis of an even earlier recognized right, prohibit the use by the third party of the alleged “earlier right.”

The latest amicus marks INTA’s sixth brief filed in Europe, before the CJEU or the Grand Board of Appeal of the European Union Intellectual Property Office, and its seventh in total in 2021; the non-Europe brief was submitted to the Supreme Court of the United States.

The authors of the amicus brief submission are Micheline Don (Parker Advocaten, the Netherlands), Marina Perraki (Tsibanoulis & Partners Law Firm, Greece), David Parrish (CMS, United Kingdom), Brigitte Spiegeler (Heffels Spiegeler Advocaten, the Netherlands), and all members of the International Amicus Committee—Europe Amicus Subcommittee.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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