Earlier right applying in a particular locality vs later trade mark. In order to be enforceable against the proprietor of a subsequent trade mark, it is sufficient, in principle, that the earlier right which only applies in a particular locality, such as a trade name, is recognised by the laws of the Member State in question and that it is used in the course of trade. There is no requirement that the proprietor of that right must be able to prohibit the use of the later mark by the proprietor of that mark. Earlier right vs even earlier right . An ‘earlier right’ within the meaning of that provision may be granted to a third party in a situation in which the proprietor of the later trade mark has an even earlier right recognised by the laws of the Member State in question over the sign registered as a trade mark, to the extent that, under those laws, the proprietor of the trade mark and of the even earlier right may no longer, on the basis of its even earlier right, prohibit the use by the third party of its more recent right.
TRADE MARK LAW
Case C-112/21 That interpretation cannot be called into question by the legislative history of that provision, even if the legislative history of an EU act may provide information relevant to its interpretation. In the present case, it should be noted that, at the time of the adoption of Directive 89/104, the text of the current Article 6(2) of that directive, as proposed by the Italian delegation to the Council of the European Union, was not adopted in its entirety. According to the proposal of that delegation, the limitation of the effects of the mark would apply ‘even though that [earlier] right may no longer be invoked against the later registered trade mark’.
Questions:
(1) For the purposes of determining whether there is an ‘earlier right’ of a third party as referred to in Article 6(2) of [Directive 2008/95],
(a) is it sufficient that, prior to the filing of the trade mark, that third party had made use in the course of trade of a right which is recognised by the laws of the Member State in question; or
(b) 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 trade mark by the trade mark holder?(2) In answering Question 1, is it also relevant whether the trade mark holder has an even earlier right (recognised by the laws of the Member State in question) in relation to the sign registered as a trade mark and, if so, is it relevant whether the trade mark holder may, on the basis of that even earlier recognised right, prohibit the use by the third party of the alleged “earlier right”?
Court of Justice
1. Article 6(2) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that, for the purposes of establishing the existence of an ‘earlier right’ within the meaning of that provision, there is no requirement that the proprietor of that right must be able to prohibit the use of the later mark by the proprietor of that mark.
2. Article 6(2) of Directive 2008/95 must be interpreted as meaning that an ‘earlier right’ within the meaning of that provision may be granted to a third party in a situation in which the proprietor of the later trade mark has an even earlier right recognised by the laws of the Member State in question over the sign registered as a trade mark to the extent that, under those laws, the proprietor of the trade mark and of the even earlier right may no longer, on the basis of its even earlier right, prohibit the use by the third party of its more recent right.
ECLI:EU:C:2022:428 - case C-112/21
