3.04.2013

In a comment of the CJEU's in judgment of 21.02.2013 in C-561/11, Fédération Cynologique Internationale, judge Octavia Spineanu-Matei and judge Andreia Constanda argue that the preliminary ruling will not lead to reconsidering the constant national jurisprudence which denies the admissibility of an action for infringement of the trade mark, filed by the proprietor of the prior trade mark against the proprietor of a trade mark registered at a later stage, pretending that it would breach the right to the trade mark of the former, as the invalidation of the subsequent trade mark had not been previously secured.
As the ruling of the Court results in a severe restraint of the exercise of an exclusive right over a registered trade mark, the ruling must be strictly applied for the context in which it was designed, as presented in its preamble, respectively only when the proprietor of a Community trade mark used both the invalidation application and the action for infringement against a Community trade mark registered subsequently, whereas the settlement of the invalidation application would be stayed by the OHIM, basically, until the settlement of the action for infringement. Given the facts of the case, the preliminary ruling offers a reasonable solution to a procedural impasse that is likely to make it impossible to examine the merits of the parties’ claims.
At the same time, the transposition of the ECJ reasoning in the case of a conflict between successive national trade marks is not possible also for the reason that, in the context of the Romanian laws and jurisprudence, while the proprietor of the earlier trade mark has the avenue of filing action for a declaration of invalidity of the later registration, he cannot successfully claim that while he waits for a settlement of the case the protection of his trade mark may decrease significantly, since the duration of infringement action is approximately the same. In other words, he cannot claim that choosing action for infringement instead of action for invalidation would allow him to a higher extent to preserve the functions specific to the mark.