Conflict between a trade name, or other sign used in the course of trade, and a european union trademark
The Spanish company RESIDENCE PALLADIUM filed opposition to the European Union trade mark application of the company FIESTA on the basis of its trade name GRAND HOTEL PALLADIUM, in particular for hotel services.
The European Union Intellectual Property Office (EUIPO) and the General Court (EGC) having recognised the validity of the opposition, FIESTA appealed the decision before the Court of Justice of the European Union (ECJ) on the grounds that it infringed in particular the conditions of application of Article 8(4) of Regulation No 207/2009 on the European Union Trade Mark (EUTMR).
By a judgment dated 19 April 2018, the ECJ confirmed the decision of partial cancellation of the trade mark as it infringed the prior rights of RESIDENCE PALLADIUM in its trade name GRAND HOTEL PALLADIUM and thereby clarified the four conditions for the application of EUTMR Article 8(4).
The ECJ referred to the four cumulative conditions of Article 8(4) for filing an opposition against a European Union trade mark (EUTM): (1) the sign (in this case the trade name GRAND HOTEL PALLADIUM) must be used in the course of trade; (2) it must have a scope which is not only local; (3) the right to that sign must have been acquired in accordance with the applicable law of the Member State in which that sign was used before the date of filing of the European Union trade mark application; (4) the right to that sign must enable its owner to prohibit the use of a more recent trade mark. The ECJ also stated that while the first two conditions are to be assessed under European Union law, the last two are to be assessed under the law of the relevant Member State.
Regarding the condition relating to the 'not only local' scope of the sign relied on.
The ECJ validated the EGC’s decision for having taken into account both the geographical and economic scope of the sign relied on.
In this respect, the ECJ specified that the owner of an unregistered sign may prove its actual use in the course of trade as well as its scope by producing any element likely to prove that the sign is known in a significant part of the territory and not only locally. In particular, it may provide advertisements broadcast on the internet.
However, in order to claim rights over the trade name, a copy of the company's entry in the companies register is not by itself capable of proving use in the course of trade. Indeed, it is necessary to file commercial and advertising documents, such as emails, letters, invoices, catalogues, advertisements, website extracts and articles available on the internet in order to prove a significant prior use of the trade name because of its distribution in the territory claimed. These documents must indicate the trade name, be in relation to an offer of products or services that are part of the company's business activity, be dated and cover the entire period of time claimed, and contain elements that can prove that the sign has been used in the course of business in a significant part of the territory (addresses of customers, suppliers, mailing lists etc.).
Regarding the well-known nature of the sign required by Spanish national law.
FIESTA complained that the EGC did not consider whether the trade name GRAND HOTEL PALLADIUM was well-known as required by Article 9(1) of the Spanish Trade Mark Law.
However, the ECJ rejected that argument since the EGC could validly have relied on a Spanish decision which had become final and recognised the protection of the trade name GRAND HOTEL PALLADIUM. The ECJ also rightly considered that it does not fall within the competence of the EGC to take account in this respect of a Spanish jurisprudential and doctrinal controversy as regards the scope of the obligation to demonstrate the "use or notorious knowledge" of an unregistered sign within the meaning of Article 9(1) of the Spanish Trade Mark Law.
In order to oppose the registration of a trade mark on the basis of EUTMR Article 8(4), it is necessary and sufficient to invoke an earlier right which has not been invalidated by a court decision with res juridicata. Therefore, while the EGC was entitled to consider the decisions of the national courts concerned, it was not justified in making any assessment on the basis of those decisions.
In conclusion, in support of an opposition or invalidity action based on a sign used in the course of trade (in particular a trade name), it is recommended to produce any decisions recognising the protection of that sign.
Whether the sign relied on entitles its owner to prohibit the use of a more recent mark on the basis of EUTMR Article 8(4) and Article 9(1) of the Spanish Trade Mark Law.
Does the right to obtain the cancellation of a more recent mark on the basis of a trade name include, a fortiori, the right to oppose the use of that mark? The ECJ replied in the affirmative that, to the extent that the Spanish law provided for the possibility of opposing the use of a trade mark, the fourth condition of EUTMR Article 8(4) is considered to be fulfilled.
The ECJ highlighted that the requirement in Article 8(4) that "the sign invoked entitles its owner to prohibit the use of the contested trade mark" is to be assessed in the light of the applicable national law, and stated that that concept must be understood as encompassing the case in which the owner of a sign is, under the applicable national law, able to prevent such use by means of an action for invalidity brought against a more recent trade mark.
Regarding the rejection of the Spanish theory of "intermediate marks".
Spanish case law recognises the possibility for a defendant to rely, as a defence, on a trade mark that he has filed before the filing of a trade mark opposed to his new application for registration. In the present case, FIESTA owned an EU trade mark including the term PALLADIUM which had been registered prior to the date of first use of the trade name GRAND HOTEL. Fiesta accordingly complained that the EGC failed to take this prior filing date into account when assessing the validity of the opposition.
However, the ECJ rejected this argument since it was not raised in the opposition proceedings before the EUIPO, but only for the first time before the EGC.
Following that decision, the defendant should invoke its earlier rights in defence to the opposition, or even the fact that he holds a family of trade marks. In the latter case, he must prove that all the marks in that family are used and known to the public and that his new mark, because of its similarities with that series of marks, can be attributed by the public as having the same origin.
Since it is likely that the EUIPO will disregard this defence, the defendant should bring an invalidity action against the opposing trade mark on the basis of his prior rights.