The judgment passed by the Court of Justice of the European Union on 23 November 2017 in case C-381/16 (ECLI:EU:C:2017:889) holds that ownership of an EU trademark registration may be claimed in the courts on the grounds provided for in Article 2.2 of the Spanish Trademark Act, provided that the proprietor is domiciled in Spain.

By this judgment, the CJEU resolves a question referred by the Spanish Supreme Court for a preliminary ruling regarding the compatibility of the aforementioned provision with Regulation no. 207/2009 on the European Union trade mark (EUTMR). In the proceedings which had given rise to that appeal, a claim to recover ownership of the “Shower Green” EU trademark registration had been filed with the EU Trademark Court in Spain. The action was based on both Article 18 of Regulation no. 207/2009, referring to action claiming ownership of a trademark registered by the proprietor’s agent or representative without consent, and Article 2.2 of the Spanish Trademark Act, which alludes to more general cases of trademarks which have been applied for in violation of third-party rights or in breach of a legal or contractual obligation.

The action had been dismissed at first instance, since the Court considered that the applicant of the trademark registration was not an agent or representative of the plaintiff, and the conditions laid down in Article 18 EUTMR had not, therefore, been fulfilled. As regards Article 2.2 of the Spanish Trademark Act, the Court considered that it was not applicable to the case, since it refers to grounds for recovery of ownership that are not provided for in the EU Regulation.

This decision was revoked on this second point by the EU Trademark Court in Alicante which, following legal doctrine that it had applied in a previous judgment, affirmed that Article 2.2 of the Spanish Trademark Act could apply in cases concerning EU trademark registrations whose proprietor is domiciled in Spain, since it falls under the scope of Article 16 of Regulation no. 207/2009 as regards reference to national laws. According to that provision, a European Union trademark as an object of property shall be dealt with as a national trademark of the country in which the proprietor has its seat or domicile or, failing that, an establishment. In the case in question, the Court considered that the EU trademark “Power Green” had been applied for in breach of the plaintiff’s rights and consequently accepted the claim of ownership based on Spanish law.

Thus, prior to ruling on the cassation appeal that had been filed against the appeal judgment, the Spanish Supreme Court referred a question to the CJEU for a preliminary ruling. The latter, in its judgment of 23 November, fully supported the stance taken by the EU Trademark Court in Alicante and confirmed its interpretation of Articles 16 and 18 of Regulation no. 207/2009.

In the CJEU’s view, action for the recovery of ownership of a European Union trademark registered in the name of an agent or representative of the trademark holder without the latter’s consent is governed exclusively by Regulation no. 207/2009. However, where different situations are concerned, the national laws of the Member State determined in accordance with the rules of Art. 16 of the Regulation shall apply.

This decision opens the door –at least in cases of trademarks whose proprietor has its seat or domicile in Spain– to the possibility of bringing claims of ownership in respect of those marks in cases that are not provided for in European legislation, which confer greater protection on persons whose trademark rights have been damaged by fraudulent third-party conduct.

Author: Carlos Morán

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