Keywords

Summary



Keywords

1. Approximation of laws – Trade marks – Directive 89/104 – Limitation in consequence of acquiescence – Meaning

(Council Directive 89/104, Art. 9(1))

2. Approximation of laws – Trade marks – Directive 89/104 – Limitation in consequence of acquiescence – Limitation period – Point from which time starts to run

(Council Directive 89/104, Art. 9(1))

3. Approximation of laws – Trade marks – Directive 89/104 – Relative grounds for refusal or invalidity – Existence of an earlier identical trade mark protected for identical goods – Exception – Long period of honest concurrent use not having an adverse effect on the essential function of the trade mark

(Council Directive 89/104, Art. 4(1)(a))

Summary

1. Acquiescence, within the meaning of Article 9(1) of First Directive 89/104 on trade marks, is a concept of Union law and the proprietor of an earlier trade mark cannot be held to have acquiesced in the long and well-established honest use, of which he has long been aware, by a third party of a later trade mark which is identical with that of the proprietor if that proprietor was not in any position to oppose that use.

First, recital 11 in the preamble to that directive states that the proprietor of the earlier trade mark must have ‘knowingly tolerated’ the use of a trade mark subsequent to his own for a substantial length of time, in other words ‘intentionally’, ‘in full knowledge of the facts’. It states too that the interests of the proprietor of an earlier trade mark must not be ‘inequitably’ prejudiced. It would be inequitable if the proprietor of the earlier trade mark were to be excluded by limitation from seeking a declaration of invalidity or opposing the use of an identical later trade mark, even when he was not in a position to do so.

Second, the objective of Directive 89/104 is to strike a balance between the interest of the proprietor of a trade mark to safeguard its essential function and the interests of other economic operators in having signs capable of denoting their goods and services. That objective implies that, in order to safeguard that essential function, the proprietor of an earlier trade mark must be capable, in the context of the application of Article 9(1) of that directive, of opposing the use of a later trade mark identical with his own.

The effect of any administrative action or court action initiated by the proprietor of the earlier trade mark within the period prescribed in Article 9(1) of Directive 89/104 is to interrupt the period of limitation in consequence of acquiescence.

(see paras 47-50, operative part 1)

2. Registration of the earlier trade mark in the Member State concerned does not constitute a prerequisite for the running of the period of limitation in consequence of acquiescence prescribed in Article 9(1) of First Directive 89/104 on trade marks. The prerequisites for the running of that period of limitation are, first, registration of the later trade mark in the Member State concerned, second, the application for registration of that mark being made in good faith, third, use of the later trade mark by its proprietor in the Member State where it has been registered and, fourth, knowledge by the proprietor of the earlier trade mark that the later trade mark has been registered and used after its registration.

(see para. 62, operative part 2)

3. Article 4(1)(a) of First Directive 89/104 on trade marks must be interpreted as meaning that the proprietor of an earlier trade mark cannot obtain the cancellation of an identical later trade mark designating identical goods where there has been a long period of honest concurrent use of those two trade marks where that use neither has nor is liable to have an adverse effect on the essential function of the trade mark which is to guarantee to consumers the origin of the goods or services. The latter condition is satisfied where, even though the trade marks are identical, the goods are clearly identifiable as being produced by different companies.

(see paras 80-81, 84, operative part 3)