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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Nieto Nuño (Approximation of laws) [2007] EUECJ C-328/06 (22 November 2007) URL: http://www.bailii.org/eu/cases/EUECJ/2007/C32806.html Cite as: [2007] ECR I-10093, [2007] EUECJ C-328/06, [2007] EUECJ C-328/6 |
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(Trade marks Directive 89/104/EEC Article 4(2)(d) 'Well'known' marks in a Member State within the meaning of Article 6 bis of the Paris Convention Knowledge of the trade mark Geographical area)
In Case C-328/06,
REFERENCE for a preliminary ruling under Article 234 EC from the Juzgado de lo Mercantil 3 de Barcelona (Spain), made by decision of 17 July 2006, received at the Court on 27 July 2006, in the proceedings
Alfredo Nieto Nuño
v
Leonci Monlleó Franquet,
composed of C.W.A. Timmermans, President of the Chamber, L. Bay Larsen (Rapporteur), J. Makarczyk, P. Klūris and J.'C. Bonichot, Judges,
Advocate General: P. Mengozzi,
Registrar: R. Grass,
having regard to the written procedure,
after considering the observations submitted on behalf of:
Mr Monlleó Franquet, by C. Arcas Hernández, procurador, and C. Cardelús de Balle, abogado,
the French Government, by G. de Bergues and J.'C. Niollet, acting as Agents,
the Italian Government, by I.M. Braguglia, acting as Agent, and P. Gentili, avvocato dello Stato,
the Commission of the European Communities, by R. Vidal Puig and W. Wils, acting as Agents,
after hearing the Opinion of the Advocate General at the sitting on 13 September 2007,
gives the following
Legal context
Community legislation
'1. A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:
(a) if it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier trade mark is protected;
(b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
2. 'Earlier trade marks' within the meaning of paragraph 1 means:
...
(d) trade marks which, on the date of application for registration of the trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the trade mark, are well known in a Member State, in the sense in which the words 'well known' are used in Article 6 bis of the Paris Convention.
...
4. Any Member State may furthermore provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:
...
(b) rights to a non-registered trade mark or to another sign used in the course of trade were acquired prior to the date of application for registration of the subsequent trade mark, or the date of the priority claimed for the application for registration of the subsequent trade mark and that non-registered trade mark or other sign confers on its proprietor the right to prohibit the use of a subsequent trade mark;
...'
'The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, an earlier right which only applies in a particular locality if that right is recognised by the laws of the Member State in question and within the limits of the territory in which it is recognised.'
The Paris Convention
'Marks: Well'Known Marks
(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well'known mark or an imitation liable to create confusion therewith.
(2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.
(3) No time'limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.'
National legislation
'1. A sign may not be registered as a trade mark:
(a) if it is identical with an earlier trade mark which covers identical goods or services;
(b) if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
2. 'Earlier trade marks' within the meaning of paragraph 1 means:
...
(d) non'registered trade marks which, on the date of filing or priority of the application for registration of the trade mark under consideration, are well known in Spain, in the sense in which the words 'well known' are used in Article 6 bis of the Paris Convention.'
The main proceedings and the question referred for a preliminary ruling
'Must the concept of trade marks which are 'well known' in a Member State, referred to in Article 4 of [the Directive] be taken to indicate solely and exclusively the degree of knowledge and establishment in a Member State or in a significant part of the territory of that State, or may the determination of whether a mark is well known be linked to a territorial scope which does not coincide with that of the territory of a State but rather with an autonomous community, region, district or city, depending on the goods or services which the mark covers and the persons to whom the mark is actually addressed, in short, depending on the market in which the mark is used?'
The question referred for a preliminary ruling
Article 4(4)(b) of the Directive, which allows a Member State to provide that a trade mark is not to be registered or, if registered, is not to be liable to be declared invalid where and to the extent that the rights of a non'registered trade mark were acquired earlier and that that non'registered mark confers on its proprietor the right to prohibit the use of a subsequent trade mark;
Article 6(2) of the Directive which entitles a Member State to authorise the using of an earlier right which only applies in a particular locality, within the limits of the territory in which it is recognised.
Costs
On those grounds, the Court (Second Chamber) hereby rules:
Article 4(2)(d) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks is to be interpreted as meaning that the earlier trade mark must be well known throughout the territory of the Member State of registration or in a substantial part of it.
[Signatures]
* Language of the case: Spanish.