[Editor's note] Like most countries and regions in the world, The rulings of the Court of Justice of the European Union have important guiding significance and predictive value for understanding the legal norms of the European Union. Esabaril (ELZABURU) At the beginning of each year, typical cases of the Court of Justice of the European Union in the previous year are summarized and published, And a brief review of each case, In order to help customers and partners to understand the EU intellectual property norms. Given the importance of Chinese customers and partners, We try to publish the Chinese version of typical cases on a weekly basis, It is convenient for Chinese partners to learn the latest information in a timely manner.

　　 [background]

　　Eu graphic trademark "SHOWER GREEN" (Registration number: 009679093) in 2011 years 1 month 24 Daily submission of application, concurrence 2011 years 8 month 29 Daily approval for registration.

　　Esteban Torras Ferrazzuolo (Hereinafter referred to as "plaintiff" ) basis "Eu trade mark regulation (The first 207/2009 No) " The first 18 article (Without permission, An agent or representative shall register the trademark of the principal or the represented as a Community trademark in his own name, The principal or the represented shall have the right to claim ownership of the registered trademark, Except when the agent or representative has valid reasons) and "Spanish trademark law (The first 17/2001 No) " The first 2. 2 article (Registration of a trademark by a third party through fraud or violation of legal or contractual obligations, Prior to the registration of the trademark application, The registered trademark shall be subject to the provisions of this Law within five years from the date of the registration announcement or from the date of the registration announcement 39 Strip the way from the date of actual use, The infringed party shall have the right to Sue the court for the ownership of the registered trademark) , The case was filed with the EU Trademark Court in Alicante, The suit claims that it is the true owner of the trademark, Claim ownership of the trademark in question.

　　The court of first instance rejected the plaintiff's claim, It holds that the EU trademark ownership dispute involved in this case is not applicable "Spanish trademark law" , Can only apply "Eu trade mark regulation" . but, The applicant for the disputed trademark is not the plaintiff's agent or representative, The Court therefore finds that this case does not constitute No 18 The circumstances specified in this article.

　　The case was then appealed to the EU Court of Appeal for Trademarks. The appeal was decided in favour of the plaintiff's claim, Holds that Spanish law is applicable in this case, And the plaintiff is the owner of the trademark involved. The court of appeal held that, "Eu trade mark regulation" The first 16 Article provision "Community mark (present 'Eu trademark' ) As object of property right, In the Community as a whole (European Union) Within the, The whole should be regarded as, The trademark is registered in the State of the Member State in which the owner of the Community registered trademark resides or operates on the relevant date" , Therefore, Dispute over the EU registered trademark rights of the owner's residence in Spain, Shall apply "Spanish trademark law" The first 2. 2 Provision of article. 　　After Spain's Supreme Court heard the case, Ask the European Court of Justice to explain "Treaty on the Functioning of the European Union" The first 267 Provision of article, To settle the dispute. On request, The European Court of Justice ruled No C-381/16 adjudication. now, The Supreme Court concluded in accordance with the above decision, Give a final judgment on the dispute.

　　 [conclusion]

　　The Supreme Court adopted the European Court's interpretation, Ascertaining that the residence of the owner of the EU trademark is in Spain, Disputes over the ownership of the trademark shall apply "Spanish trademark law" The first 2 Provision of article.

　　 "Eu trade mark regulation" The first 18 Article provision: "Without permission, An agent or representative shall register the trademark of the principal or the represented as a Community trademark in his own name, The principal or the represented shall have the right to claim ownership of the registered trademark" . In principle, A lawsuit is brought on the basis of the above reasons, The provisions of this Act shall apply. but, divisor 18 Other circumstances than those specified in this Article, It does not fall within the legal norms of the European Union.

　　 "Eu trade mark regulation" The first 16 The article stipulates that the EU trademark right is the object of real right, The trademark rights in all areas of the European Union as a whole, Equal to its right holder (domicile, Place of residence or business) The national registered trademark right of the member state. According to the interpretation of the article by the European Court of Justice, for "Eu trade mark regulation" The first 18 Circumstances other than those specified in this article, Fall under the Ordinance 16 The category specified in the article, That is, the national law of the Member State in which it is located shall apply, Resolve the dispute over the restoration of EU trademark ownership.

　　Given that the European Court of Justice has ruled in its ruling (C-381/16) Medium confirmation, "Spanish trademark law" The first 2. 2 Provision of article (A registered trademark infringes on the rights of others or violates legal or agreed obligations) , Not in relation to "Eu trade mark regulation" The first 16 Articles and regulations 18 The provisions of the article are in conflict with each other, Therefore, The Spanish Supreme Court ruled, The decision of the EU Court of Appeal for Trademarks does not violate it "Eu trade mark regulation (The first 207/2009 No) " The first 16 Provision of article (The only reason to file a complaint) .

　　similarly, The judgment in this case summarizes briefly the basis "Spanish trademark law" The first 2 The article requires the restoration of the legal circumstances of ownership. Specifically include: There is a prior relationship between the parties (The agent or representative registered the trademark without permission, Or in general, The relationship of trust is broken) , Or registered trademark behavior improper use of others have gained reputation, etc.

　　 [comment]

　　The European Court of Justice has made that clear in its rulings, The circumstances of the dispute seeking reinstatement of EU trademark ownership are "Eu trade mark regulation" The first 18 Circumstances other than those specified in this Article, The legal provisions of the Member State in which the trademark owner is located shall apply. If Spanish law applies, The rights of the infringed can be protected to a greater extent, Because not only for the agent or representative without the principal or the representative's permission to register the EU trademark, And for the perpetrator through fraud, Or in violation of statutory or agreed obligations to register the EU trademark, Any person who has been infringed can claim to restore his or her ownership of the disputed trademark.

　　current "Eu trade mark regulation (The first (EU) 2017/1001 No) " The first 19 Article makes the same provision, Under the property rights category, An EU trademark is deemed to be a national registered trademark of the Member State in which the owner is located. Therefore, although "Eu trade mark regulation (The first 207/2009 No) " Has been superseded by existing law, The determination of the law applicable to the trademark ownership dispute in this case shall remain valid.

　　 [reference]

　　 " [Eu trademark] Spanish trademark law requires the restoration of EU trademark ownership (C-381/16) "

　　compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights