Principle of priority
According to the principle of priority, in the case of a trademark conflict the earlier right will succeed. Normally, the proprietor of a trademark cannot defend himself by pointing to the fact that he is the owner of a later trademark (CJEU C‑561/11, Fédération Cynologique Internationale; CJEU C‑491/14, Rosa dels Vents Assessoria).
While there have already been exceptions to this principle (eg toleration of the use of a later trademark for five successive years), the EU legislator has now established a general concept of intervening rights.
The new provisions on intervening rights are construed as defence in infringement proceedings (Art 18 of the Trademark Directive; Art 13a of the European Union Trademark Regulation) and as “grandfathering” or “exclusion” in revocation/invalidity proceedings (Art 8, 9, 46 para 2 of the Trademark Directive; Art 53 ff of the European Union Trademark Regulation).
The provisions in the European Union Trademark Regulation are already in force. The Member States must transpose the new Trademark Directive into national law by 14 January 2019.
New legal situation
According to the new legal provisions, the situation at the filing or priority date of the later trademark also has to be taken into account. The earlier right will succeed only if the proprietor of the earlier trademark would (also) have been successful in enforcing its rights at the filing or priority date of the later trademark.
Here are the most important principles:
- The earlier trademark is not an obstacle to the registration and use of a later trademark, if the earlier trademark could have been declared invalid due to non-use at the filing or priority date of the later trademark.
- The earlier trademark, which lacks inherent distinctiveness, is descriptive or a generic term, will not succeed if it had not yet acquired a distinctive character at the filing or priority date of the later trademark.
- The earlier trademark will not succeed because of the likelihood of confusion, if it had not yet become sufficiently distinctive to support a finding of likelihood of confusion at the filing or priority date of the later trademark.
- The earlier trademark with reputation will not succeed based on unfair exploitation of, or detriment to its distinctive character or reputation, if it had not yet acquired reputation at the filing or priority date of the later trademark.
On the other hand, the proprietor of a later trademark will not be able to prevent registration and use of an earlier trademark based on the later trademark (Art 18 para 3 of the Trademark Directive; Art 13a para 3 of the European Union Trademark Regulation). Thus, intervening rights result in a coexistence of conflicting trademarks.
Consequences for trademark owners
As invoking an intervening right is now a valid defence against actions taken by the earlier trademark owner, this shall be a motivation to monitor applications of new trademarks and to initiate proceedings, in particular opposition proceedings, against conflicting trademarks at an early stage.
Since genuine use, acquired distinctiveness or reputation may need to be evidenced for historical points in time, it is more important than ever to fully document the use of the trademark and to establish a respective archive.
Consequences for the application of (later) trademarks
Intervening rights merely provide “grandfathering” for later trademarks in the single case and allow use of such a trademark. However, future trademark applications cannot be justified based on intervening rights. Bearing this in mind, it therefore is not a suitable strategy to forego earlier-rights-searches and attacks against earlier conflicting trademarks (which are subject to cancellation) and instead rely on intervening rights.
Consequences for owners of non-registered trademarks and other signs
Other later signs that are not registered as trademarks are not capable of constituting intervening rights according to the current provisions. This might be a motivation to register (all elements of) a sign as a trademark as soon as possible.
The newly established intervening rights will have important consequences for trademark owners, trademark applicants and owners of other signs, as the relevant point of time in infringement and revocation/cancellation proceedings will now be the filing or priority date of the later trademark rather than the date of action.