CJEU: National trade name rights are not governed by the EU Trade Mark Directive
Marcel Pemsel
CJEU: National trade name rights are not governed by the EU Trade Mark Directive
It does not seem to require a decision from the Court of Justice of
the EU (‘CJEU’) for the finding that national trade name rights are not
governed by the EU Trade Mark Directive
(‘TMD’). Yet, sometimes national courts refer good questions to the
CJEU but the latter decides to answer different ones. This can lead to
seemingly redundant decisions as it happened in Purefun (case C-365/24).
Background
The
Swedish company Doggy AB (‘Doggy’) produces dog food. Its business
purpose is to manufacture and trade in animal feed and other products.
It is the owner of the company name ‘Doggy AB’ and the Swedish word mark
‘DOGGY’, which is registered for animal feed in Nice Class 31.
Purefun
Group AB (‘Purefun’) is also a Swedish company active in the retail
trade of dog food and dog treats. It sells its products using the mark
‘DOGGIE’ and the domain ‘doggie.se’.
Doggy filed an infringement
action against Purefun requesting an injunction against the use of the
sign ‘DOGGY’ and the domain name ‘doggie.se’ on the basis of Doggy’s
trade mark and company name. The action was successful at first
instance.
Following the defendant's appeal, the court of appeal asked the CJEU whether it is compatible with the TMD and the Treaty on the Functioning of the EU
(‘TFEU’) for a Swedish company name to offer protection against trade
mark use of the same name (so-called ‘cross-protection’).
The CJEU’s decision
The
Court emphasized that the TMD only aims to harmonize trade mark law but
not to harmonize the law on trade names and company names. Accordingly,
the latter’s protection is subject to national law.
Nevertheless, EU law protects trade names through the Paris Convention and the TRIPS Agreement.
Provisions on trade names from the Paris Convention were incorporated
into the TRIPS Agreement. The latter is binding for the EU. This
includes Article 8 TRIPS, which states that
"a trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a [trade mark]."The Court held that, according to Recital 41 TMD, the TMD should be fully consistent with the Paris Convention and the TRIPS Agreement.
The judges further referred to Art. 5(4)(a) and Art. 10(3)(d) TMD, which provide for the use of trade marks against company names and vice versa. These provisions are an expression of the priority principle, which constitutes one of the fundamental principles of trade mark law and, more generally, of intellectual property law as a whole.
The Court ultimately did not rule on the question whether cross-protection of company name rights against trade marks is compatible with the TMD. The judges were of the opinion that the present case only concerned a conflict between two trade names. The TMD, however, is not applicable to such a conflict.
The CJEU examined and ultimately denied a violation of the principle of the free movement of goods (Art. 34 and Art. 36 TFEU) through the protection of one trade name against another trade name. The restriction of the free movement of goods by prohibiting the use of a trade name is justified by overriding reasons of public interest, namely the protection of trade names against the risk of confusion.
Comment
In
view of the facts in the judgment and in the national court's request
for a preliminary ruling, the CJEU’s answer is unsatisfactory. The
plaintiff also seems to be challenging the trade mark use of ‘DOGGIE’.
This is also reflected in the question referred by the Swedish court. It
is not clear why the CJEU considered this to be a mere trade name
conflict.
In any case, the answer to the question posed by the
referring court should be clear from the decision: Cross-protection is
permissible, i.e., a trade name can also be invoked to attack later
trade marks and their use. This is supported by Art. 5(4)(a) and Art.
10(3) TMD cited by the CJEU.
Further, the harmonization of trade
mark law does not serve to protect trade marks and their use from other
national rights. As Art. 10(4)(b) TMD shows, the use of a sign as a
trade mark can also be challenged on the basis of other earlier rights,
such as a name right, a right of personal portrayal, copyright and any
other industrial property right. There is no need to privilege a
particular intellectual property right over another. The CJEU correctly
emphasized that the priority principle is decisive in a cross-conflict.