The matter at hand

Rosa dels Vents brought an infringement action against U Hostels to prevent the latter from using a sign similar to Rosa dels Vents’ trade mark. U Hostels contended that this action should be dismissed as Rosa dels Vents had not filed an invalidation action against U Hostels’ later trade mark registration for that sign.

With reference to national case law, the referring court in Madrid raised the question of whether the exclusive right of the proprietor of a trade mark extends to a third-party proprietor of a later trade mark, without the need for that latter mark to have been declared invalid beforehand.

The judgment of the ECJ

The ECJ decided to give its decision in this matter by order, as it already held that the proprietor of a Community trade mark can prevent the proprietor of a later trade mark from using infringing signs, without the need for that latter mark to have been declared invalid beforehand (Fédération Cynologique, C-561/11). With reference to the considerations therein, the ECJ concludes that it is “clear from the wording of Article 5(1) [Trade Mark Directive] and from the general approach of that provision that, under the conditions set out therein, the proprietor of a trade mark must be able to prevent its use by the proprietor of a later mark” (paragraph 27).