This is a preliminary question (Case C-488/10) raised by the Community Trademark Court of Alicante (Court) before the Court of Justice of the European Union (Court), in a case in which Celaya Emparanza y Galdós Internacional, SA (Cegasa) had brought an infringement action based to priority community design registration 000421649-0001:
compared to the design marketed by Proyectos Integrales de Balizamiento, SL (PROIN):
At the end of 2007, PROIN marketed a road marking that Cegasa estimated did not produce a general impression different from that of its community design 000421649-0001. In January 2008, Cegasa extrajudicially requested PROIN to put an end to the infringement. The latter denied the infringement, undertaking to introduce certain modifications to its design. In April 2008, PROIN registered with the OHIM community design 000915426-0001 (reproduced second) after that registered by Cegasa.
Cegasa filed an infringement action before the Court without first filing an action for nullity with the OHIM against the subsequent community design registration 00091546-0001. PROIN opposed the infringement action alleging that Cegasa lacked active standing because the design marketed by PROIN was a reproduction of the registered community design 00091546-0001, its owner enjoying a right of use so its use could not be classified. of infringement.
Given this situation, the Court asked the Court whether the right to prohibit use by third parties extends to any third party that uses another design that does not produce a different general impression on informed users or if, on the contrary, a third party that uses a subsequent community design registered in its favor as long as it is not annulled. He also asked the Court whether the answer to that question varies depending on the good or bad intention of the holder of the subsequent record.
The Court has responded to the first question by indicating that third party must be interpreted as any possible infringer of a registered Community design, whether or not this third party is the holder of a subsequent Community design registration. The fact that the Community Design Regulation grants an exclusive right to use such a circumstance is not sufficient to call into question the indicated interpretation, adding that the provisions of that Regulation must be interpreted in light of the principle of priority by virtue of which The previous registered community design takes precedence over any subsequent one.
Therefore, the Court has cleared up the doubt raised and makes it clear that invalidity is not a prerequisite for bringing an infringement action against a subsequent Community design registration. In fact, it could be the case that infringement is declared and the subsequent community design registration is still in force with the OHIM.
Regarding the second question, the Court has indicated that the first question does not vary depending on the intention and behavior of the third party, whether in good or bad faith.
In conclusion, this is a pioneering ruling of enormous practical importance in that it establishes a clear rejection of the validity of the traditionally called “coverage records”, frequently used by alleged infringers to protect their use and hinder the exercise of actions. of infringement. Currently, the Court has yet to decide another preliminary ruling question raised by the same Court, in relation to community trademarks (case C-561/11), and where the adoption of the same criterion is foreseen.
Furthermore, this Judgment establishes a completely different criterion from what has been applied by Spanish jurisprudence in infringement actions against use by third parties covered by registered Spanish trademarks. In these cases, the owner of the previously registered trademark is forced to exercise, prior to or in conjunction with the infringement action, the nullity of that subsequently registered sign.
Author Luis Soriano
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