Experts Speak

Taking Earlier IP right for invalidity?

In an invalidity proceeding, what about an assertion of the mark which expires until the end of the proceedings? While in the invalidity proceeding, the mark that is asserted needs to be valid till the end of the proceedings but what happens when the mark expires within the invalidity proceedings. The European Court of Justice (ECJ) rules the same for the first time answering the question about the validity of an asserted mark, which was a design that expired within the invalidity proceedings.   

As per the principle is concerned, an IP right that was registered/filed earlier will have a priority over the subsequently registered trademark. As per Article 52(2) (d) of Regulation (EC) No 40/94 (now Art. 60(2)(d) of Regulation [EU] 2017/1001): an EU trademark is declared invalid if there is an earlier designation of origin (another trademark or also another design/flavor) or geographical indication. But this does not answer our question of whether it will apply to older designs already expired. 


Facts of the case

The case belongs to Style & Taste v The Polo/Lauren Company, where the question was raised concerning the design or trademark “Polo Player.” In 1997, the design of the polo player was registered by the applicant Style. As per the term is concerned, the design expired after 20 years that is in May 2017. Under Spanish law, the applicant does not get the chance of renewing the registration of the design. 

Defendant The Polo applied for the Polo Player mark as a European Union Figurative mark which was registered in 2005, after being applied in 2004. Seeing this, Style filed for an invalidity proceeding in 2016 asserting its mark which was registered in 1997.  Style relied on the same proposition of on Article 52(2) (d) of Regulation (EC) No 40/94 (now Article 60(2)(d) of Regulation [EU] 2017/1001): according to which an EU trademark shall be declared invalid where there is an earlier right such as design protection. Even though the action was filed in 2016 but the decision took place in 2019, when the design was expired. Due to the fact that the design was expired, the EUIPO Board of Appeal dismissed the case. 

Deciding on the question

Bringing the same action to the European Court of Justice, Style contended that for the invalidity proceedings, proving that the design was older than the contested mark and therefore, the likelihood of confusion was established. This was more than sufficient for an invalidity proceeding to be proven in the present case. Even though the registration could not be renewed as per Spanish Law, the design had not lapsed due to its expiry. ECJ dismissed the contention. 

As per Article 52(2) (d) of Regulation No 40/94, the proprietor of an earlier industrial property right must be able to prove that he can prohibit the use of the disputed EU trademark not only on the filing date or priority date of that trademark but also at the time of the EUIPO’s decision on the application for a declaration of invalidity, the court ruled. If it is established that the mark asserted in the proceeding does not collide with that of the present mark by the end of the invalidity proceedings, the application for a declaration of invalidity must be rejected. 

Therefore, ECJ ruled providing us the answer that the application for a declaration of invalidity of EU trademark must be rejected if at the time of EUIPO decision there is no collision between the asserted and the present mark. The law is clear with the invalidity proceedings was dubious concerning this issue, where this judgment brings some clarity, where the design is no longer protected in an invalidity proceeding if it expires within the same. Nevertheless, in other cases of invalidity proceedings where distinctiveness and novelty are at stake, the design even if no longer protected will still be relevant.

Author: Saransh Chaturvedi an associate at IP And Legal Filings, in case of any queries please contact/write back us at support@ipandlegalfilings.com.

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by Saransh Chaturvedi

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