the matter at hand

Between 1968 and 1977, two brothers jointly operated a company engaged in passenger transport by coach using a name not referencing their shared family name. In 1975, brother 1 created company X: a new, separate company focussed on transport by coach, which used the family name as a trade name. In 1977 brother 1 left the original company. Brother 2 continued that company’s activity while retaining the original company name. In 1991, brother 2 started using their family name on the coaches. After brother 2’s death in 1995, his two sons Y and Z continued the business, for which purpose they created “Classic Coach Company”. On the back of the Classic Coach coaches, they displayed the initial of brother 2’s first name followed by the family name.

Company X registered a trade mark in 2008 for the family name. This trade mark was registered for, inter alia, services in Class 39 that include services provided by a coach company.

Company X commenced proceedings in The Netherlands, on the grounds that the defendants' (sons Y and Z) use of the sign corresponding to the family name would infringe the trade mark rights registered in 2008. The defendants contested the alleged infringement by stating that their use was based on an ‘earlier right which only applies in a particular locality if that right is recognised by the laws of the Member State in question’, as referred to in Article 6(2) of Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks.

The referring court, Hoge Raad der Nederlanden (Supreme Court of the Netherlands), uncertain of what constitutes such an ‘earlier right’, referred two questions to the ECJ. First, whether Article 6(2) of Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that, for the purposes of establishing the existence of an ‘earlier right’ within the meaning of that provision, there is a requirement that the proprietor of that right must be able to prohibit the use of the later trade mark by the proprietor of that mark. Second, where the trade mark proprietor has an even earlier right in relation to the sign registered as a trade mark and, if so, whether it is relevant whether the trade mark proprietor may, on the basis of that even earlier recognised right, prohibit the use by the third party of the alleged ‘earlier right’.

the judgment of the ecj

With regard to the first question, the ECJ considers that “as regards the wording of Article 6(2) of Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, it must be observed that […] that provision does not in any way provide that, in order to be able to assert the same right against the proprietor of a later mark, the third party must be able to prohibit the use of that mark” (paragraph 45). The ECJ goes on to consider that “Article 6(2) of that directive provides only for a limitation of the rights conferred by a registered trade mark, as provided for in Article 5 of that directive” (paragraph 47). Moreover, “‘earlier rights’, within the meaning of Article 6(2) of Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, must only apply in a particular locality, which means that, from a geographical point of view, they cannot cover a territory as large as that covered by a registered trade mark, since that mark normally covers the whole of the territory for which it was registered” (paragraph 48).

Referring to the drafting history of Article 6(2) of Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, the ECJ considers that “it cannot be inferred from this that the EU legislature intended to limit the scope of Article 6(2) of Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks solely to earlier rights which entitle their proprietor to prohibit the use of the subsequent mark. Such a condition would deprive that provision of all practical effect, in so far as it would treat the conditions for the application of that provision in the same way as the conditions for the application of the further grounds for refusal or invalidity laid down in Article 4(4)(b) and (c) of that directive” (paragraph 51). “Consequently, under Article 6(2) of Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, in order to be enforceable against the proprietor of a subsequent trade mark, it is sufficient, in principle, that the earlier right which only applies in a particular locality, such as a trade name, is recognised by the laws of the Member State in question and that it is used in the course of trade” (paragraph 52).

In relation to the second question, the ECJ first notes that “Trade Mark Directive 2008/95 governs, in principle, not the relationship between the various rights which may be classified as ‘earlier rights’ within the meaning of Article 6(2) of that directive, but the relationship of those rights with trade marks acquired by registration” (paragraph 57). The domestic law of the Member State concerned primarily governs the relationship between the various rights that can be classified as ‘earlier rights’ within the meaning of Article 6(2) of Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks. For the purposes of the application of Article 6(2), it is therefore important that “the right relied on by the third party is recognised by the laws of the Member State in question and that that right is still protected at the time when it is relied on by its proprietor in order to counter the claims of the proprietor of the trade mark with which it is alleged to conflict” (paragraph 62). It is for the referring court to determine whether an earlier, still protected right (still) exists under applicable national law. Because, the ECJ then considers, “In a situation where a right relied on by a third party is no longer protected under the laws of the Member State in question, it cannot be held that that right constitutes an ‘earlier right’ recognised by that law, within the meaning of Article 6(2) of Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks” (paragraph 64). This leads to the conclusion “that Article 6(2) of Directive 2008/95 must be interpreted as meaning that an ‘earlier right’ within the meaning of that provision may be granted to a third party in a situation in which the proprietor of the later trade mark has an even earlier right recognised by the laws of the Member State in question over the sign registered as a trade mark, to the extent that, under those laws, the proprietor of the trade mark and of the even earlier right may no longer, on the basis of its even earlier right, prohibit the use by the third party of its more recent right” (paragraph 65).