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

New York, New York, August 18, 2021—The International Trademark Association (INTA) filed an amicus brief on August 16 before the Court of Justice of European Union (CJEU) in Meering Touringcars Amsterdam B.V. v. V.O.F. Classic Coach Company (CJEU Case C-112/21), concerning the co-existence of trademarks and earlier non-registered rights.

The Dutch Supreme Court referred the case to the CJEU seeking guidance on issues related to limitations of the effects of a registered trademark. In particular, it is asking for clarity on the issue of co-existence of earlier unregistered rights of local significance with later registered national trademarks.

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).

Following applicable EU trademark law and assuming the earlier right was “legally”’ acquired and is enforceable, INTA argues in its amicus brief that the earlier right can co-exist with the later trademark registration and does not constitute a barrier to the registration of the later trademark, nor can the owner of the later trademark object to the older unregistered (trade name) right.

Furthermore, INTA notes that, for the holder to rely on its earlier unregistered local right, there is no requirement entitling the holder to bar the later trademark.

In its amicus brief, the Association further argues that it is relevant whether the trademark holder—Meering Touringcars Amsterdam BV, in this instance—has an even earlier unregistered right (to a sign which it later registered as a trademark) and whether the trademark owner is nevertheless stopped from invoking that even earlier right due to acquiescence by the owner of the later unregistered local trade name right.

About the International Trademark Association
The International Trademark Association (INTA) is a global association of brand owners and professionals dedicated to supporting trademarks and related intellectual property (IP) to foster consumer trust, economic growth, and innovation. Members include nearly 6,500 organizations, representing more than 34,350 individuals (trademark owners, professionals, and academics) from 185 countries, who benefit from the Association’s global trademark resources, policy development, education and training, and international network. Founded in 1878, INTA is headquartered in New York City, with offices in Beijing, Brussels, Santiago, Singapore, and Washington, D.C., and a representative in New Delhi. For more information, visit inta.org.

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