Must the earlier IP right asserted in invalidity proceedings remain valid until the end of the proceedings? The CFI ruled for the first time on the question in invalidity proceedings against the EU trademark ‘Polo Player’ on the basis of an earlier protection right by a national design. The focus was on the expired design – expired within the invalidity proceedings.
In principle, the earlier IP right has priority over a subsequently registered trademark, this principle of European IP law is also based on Art. 52(2)(d) of Regulation (EC) No 40/94 (now Art. 60(2)(d) of Regulation [EU] 2017/1001): according to this, an EU trade mark is declared invalid if there is an earlier designation of origin (another trade mark or also another design/flavour) or geographical indication.
But does this also apply to older designs that have already expired?
The European Court of Justice (CFI) heard this question in the case Style & Taste v The Polo/Lauren Company concerning the design or trade mark “polo player”. The applicant Style & Taste (Spain) had registered the design of a polo player as a Spanish design in 1997. The term of protection for this design had expired after 20 years and ended in May 2017, because under Spanish law it could not renew the registration of the design, the applicant explained.
In 2004, the intervener The Polo/Lauren Company LP (USA) applied for a polo player as a European Union figurative mark, which was registered in 2005.
Style & Taste filed an application for invalidity against this mark in 2016, referring to the Spanish design of a polo player registered in 1997. The applicant relied 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. This was indeed the case when the invalidity action was filed in 2016 – but the adoption of the contested decision took place only on 7 January 2019, when the Polospieler design had expired.
Therefore, in the contested decision of 2019, the EUIPO Board of Appeal decided to dismiss the invalidity action because the Polospieler design had expired.
Applicant: Design ‘Polo player’ not revoked but expired
Applicant Style & Taste brought an action against this before the European Court of Justice (CFI; EU:T:2021:318). For the invalidity proceedings, it had been sufficient to prove that the design was older than the contested mark and that a likelihood of confusion had been established under Spanish law, the applicant argued. Although the registration of the design could not be renewed, the design had not lapsed due to its expiry.
The CFI nevertheless dismissed the action. The proprietor of an earlier industrial property right referred to in Article 52(2)(d) of Regulation No 40/94 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. This is because an application for a declaration of invalidity must be rejected from the systematics of the other provisions of Regulation No 40/94, the CFI explained, if it is established with certainty that the collision with the earlier EU trademark has ended at the end of the invalidity proceedings.
Design no longer protected in invalidity proceedings
The CFI thus ruled for the first time that an application for a declaration of invalidity of an EU trademark based on Art. 52(2) of Regulation No 40/94 must be rejected if the conditions for prohibiting the use of that trade mark are no longer fulfilled at the time of the EUIPO’s decision on that application.
This judgment brings new legal clarity to a design that is no longer protected in invalidity proceedings. It is important to note that this judgment applies to invalidity proceedings concerning the earlier IP right. Nevertheless, a design that is no longer protected is relevant in invalidity proceedings in other circumstances – namely when the distinctiveness and novelty of another design is at stake (see “Davide Groppi“, CFI, T:2021:363).
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