Opinion of the Advocate General — ECLI:EU:C:2012:722
Date: 2012-11-15
Language of the case: Spanish
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Reference for a preliminary ruling
Origin: Spain

Summary — Judgment of the Court (First Chamber), 21 February 2013 1. Questions referred for a preliminary ruling — Jurisdiction of the national court — Assessment of the need for, and the relevance of, the questions referred (Art. 267 TFEU) 2. Questions referred for a preliminary ruling — Jurisdiction of the Court — Limits — Clearly irrelevant questions and hypothetical questions put in a context not permitting a useful answer — Questions not related to the purpose of the main proceedings (Art. 267 TFEU) 3. Questions referred for a preliminary ruling — Reference to the Court — Question raised by the national court of its own motion — Lawfulness (Art. 267 TFEU) 4. Community trade mark — Effects of the Community trade mark — Rights conferred by the trade mark — Right to prohibit the use of the trade mark — Any third party –Meaning — Proprietor of a later Community trade mark — Included — Action for infringement — No need to await the declaration of invalidity of the later Community mark (Council Regulation No 207/2009, Art. 9(1)) 1. See the text of the decision. (see para. 26) 2. See the text of the decision. (see para. 27) 3. See the text of the decision. (see para. 30) 4. Article 9(1) of Regulation No 207/2009 on the Community trade mark 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. It is apparent from the wording and the general approach of Article 9(1) of the regulation that the proprietor of a Community trade mark must be able to prevent the proprietor of a later Community trade mark from using that latter trade mark. That conclusion is not called into question by the fact that the proprietor of a later trade mark also has the benefit of an exclusive right by virtue of Article 9(1) of the regulation. In that regard, the provisions of the regulation must be interpreted in the light of the priority principle, under which the earlier Community trade mark takes precedence over the later Community trade mark. It is clear from, inter alia, Articles 8(1) and 53(1) of the regulation that, in the event of a conflict between two marks, the mark registered first is presumed to have met the conditions required to obtain Community protection before the mark registered second. It is admittedly true that the procedure for the registration of Community trade marks, laid down in Articles 36 to 45 of the regulation, includes a substantive examination that seeks to determine, prior to registration, whether the Community trade mark fulfils the requirements for protection. However, those circumstances are not conclusive. First, despite the safeguards provided by the procedure for registering Community trade marks, it is not entirely inconceivable that a sign that is liable to infringe an earlier Community trade mark may be registered as a Community trade mark. This may arise, inter alia, where the proprietor of the earlier Community trade mark has not filed a notice of opposition under Article 41 of the regulation, or where that opposition has not been examined on its merits by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) by reason of non-compliance with the procedural requirements laid down by Article 41(3). Secondly, the possibility for the proprietor of an earlier Community trade mark to bring infringement proceedings against the proprietor of a later registered Community trade mark cannot render either the bringing of an application for a declaration of invalidity before OHIM or the mechanisms for prior control available under the procedure for registering Community trade marks devoid of all purpose. Finally, the exclusive right under Article 9(1) of the regulation was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor of the mark, that is to say, to ensure that the trade mark can fulfil its own function. If the proprietor of an earlier trade mark, in order to prevent the use by a third party of a sign that is liable to affect the functions of its trade mark, were required to await the declaration of invalidity of the later Community trade mark held by that third party, the protection accorded to it by Article 9(1) of the regulation would be significantly weakened. (see paras 37-40, 42, 44-46, 48, 50-52, operative part)