A decision from the Spanish Supreme Court delivered on 24 July 2013 (Editorial Prensa Canarias, S.A. v. Radio Pública de Canarias S.A.) declares that no infringement of trade mark rights will be established against a defendant that is using a (later) valid trade mark registration. The issue has been long discussed among Judges, lawyers and scholars in Spain, and it seems it has been a matter of discussion in Hungary, too. The Spanish Supreme Court decision of 4 April 2012 in DKNY conceded that, provided the nullity action was filed previous or along the infringement claim, and provided the trade mark registration was annulled, the claimant could obtain damages derived from the infringement. That meant a step forward by the Spanish Supreme Court, still not aligned with the CJEU interpretation in Case C‑488/10 Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamientos SL in respect of Community Registered Designs (see the IPKat post here). However, one could keep the hope, as DKNY was handed down eleven months before the Judgment of 21 February 2013 in C-561/11 Fédération Cynologique International v. Federación Canina Internacional de Perros de Pura Raza, where the CJEU ruled:

 "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".

The reader will then note that while the CJEU declares that there is no need for the claimant to seek the invalidation of the infringer's later trade mark, the Spanish Supreme Court says, persistently, the opposite. Note that the CJEU makes such interpretation in respect of the CTM Regulation (EC) 207/2009. Therefore the infringer owning a Spanish trade mark will have an exception which is inexistent when the infringer owns a Community Trademark.

Is this possible under the current legal European framework? Indeed is possible, as we see, but not entirely in conformity with the Directive 2008/95/CE. It is implicit in Article 9 (Limitation in consequence of acquiescence) that the trade mark owner can oppose against the use of a later registered trade mark, as it is noted by the CJEU and the Advocate General P. Mengozzi in the C-561/11 case. That Article was transposed intact to the Spanish Trade Mark Law 17/2001 (Article 52.2) and so it was expected that the Spanish Supreme Court would have followed same interpretation as the CJEU, but it has clearly not. The result is undesirable, as the protection accorded to the owner of a national trade mark would be significantly weakened if it needs to wait until the later trade mark is declared invalid. Surely that will negatively affect one of pillars of the harmonization, which is the need to preserve the essential function of the trade mark by providing the same level of protection to trade marks across the EU Members.