47        ....the Court has already held, in the context of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), that actions alleging infringement and actions for a declaration of invalidity are distinguished in terms of their object and effects, with the result that the fact that it is possible for the holder of an earlier registered Community design to bring infringement proceedings against the holder of a later registered Community design cannot render the bringing of an application for a declaration of invalidity against the latter before OHIM devoid of all purpose (Celaya Emparanza y Galdos Internacional, paragraph 50).

48 That finding may be applied, mutatis mutandis, to the context of Community trade marks, in such a way that the possibility for the proprietor of an earlier Community trade mark to bring infringement proceedings against the proprietor of a later registered Community trade mark cannot render either the bringing of an application for a declaration of invalidity before OHIM or the mechanisms for prior control available under the procedure for registering Community trade marks devoid of all purpose.

49 It is, furthermore, important to emphasise the need to preserve the essential function of the trade mark, which is to guarantee to consumers the origin of the goods (Case C‑206/01 Arsenal Football Club[2002] ECR I‑10273, paragraph 51).

50 In that regard, the Court has repeatedly held that the exclusive right under Article 9(1) of the Regulation was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor of the mark, that is to say, to ensure that the trade mark can fulfil its own function (Joined Cases C‑236/08 to C‑238/08 Google France and Google [2010] ECR I‑2417, paragraph 75 and the case-law cited).

51 As the Advocate General observed in points 43 and 44 of his Opinion, if the proprietor of an earlier trade mark, in order to prevent the use by a third party of a sign that is liable to affect the functions of its trade mark, were required to await the declaration of invalidity of the later Community mark held by that third party, the protection accorded to it by Article 9(1) of the Regulation would be significantly weakened.

52 In the light of the foregoing, the answer to the question referred is that Article 9(1) of the Regulation must be interpreted as meaning that the exclusive right of the proprietor of a Community trade mark to prohibit all third parties from using, in the course of trade, signs identical with or similar to its trade mark extends to a third-party proprietor of a later registered Community trade mark, without the need for that latter mark to have been declared invalid beforehand."

Therefore, the ECJ’s response to the question referred was:

"Article 9(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark must be interpreted as meaning that the exclusive right of the proprietor of a Community trade mark to prohibit all third parties from using, in the course of trade, signs identical with or similar to its trade mark extends to a third-party proprietor of a later registered Community trade mark, without the need for that latter mark to have been declared invalid beforehand.”

The author would be interested to read what our readers think the effect of this decision will be (if any…), in particular with regard to section 11(1) UK Trade Marks Act 1994 which provides that “....(a) registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered”

Will this make section 11(1) obsolete and can section 11(1) now be ignored (at your own peril)?  Please post your comments below.