[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]

　　Japan corporation SANRIO COMPANY LTD (Hereinafter referred to as "SANRIO" ) , It's a world famous cartoon character HELLO KITTY In Spain, European Union, As well as the extension of the international registered trademark in effect in Spain and so on many registered trademark owners, The trademark drawing is shown in Figure 1: Figure 1　　2015 years 10 month, SANRIO Sue RIO LUNA, S. L. , RIO STAR BISUTER? AS, S. L. , ISABEL BISUTER? A, S. L. and RIO SOL BISUTER? A, S. L. Etc (Hereinafter referred to as "defendant" ) Sell the trademark in dispute (As shown in Figure 2) Act of commodity, Infringe upon "HELLO KITTY" Registered trademark right. Figure 2　　Defendant argues, The trademarks they use "HOLA GATO" It is registered in Spain (Registration number: 2934333) .

　　The dispute in this case can be summarized as follows: Whether the owner of the prior trademark can claim that his trademark was registered earlier, Reasonable confrontation with other trademark owners who are later registered; or, Trademark infringement action, Whether it must be invalid in the first place or at the same time?

　　Judgment of first instance, Used by the defendant in the sale of goods "HOLA GATO" Trademark graphic logo and plaintiff registered trademark "HELLO KITTY" Constitute similar mark, There is a risk of confusion in the relevant markets, Infringement of the plaintiff's trademark rights of several well-known trademarks.

　　Some of the defendants protested the decision, appeal, The trademark at issue in this case has been (Third party outside the case) Legally registered grounds, A finding of no malice in the defendant's use, Therefore, No damages need be paid.

　　 [conclusion]

　　The EU Trademark Court rejected the appeal, The judgment of the first instance is affirmed, identification "The owner of the inferior registered trademark shall use his trademark, Similar to that of the prior trademark, It shall be recognized as an infringement of the prior trademark right, Need not (The prior trademark owner) Filing a request for invalidation of a later registered trademark first or simultaneously" .

　　The court's decision referred to the European Court of Justice 2013 years 2 month 21 Day control C-561/11 adjudication, Which explains "Eu trade mark regulation (The first 207/2009 No) " (Has been "Eu trade mark regulation (The first 2017/1001 No) " replace) Relevant provisions of: According to priority principle, The trademark registered earlier is better than the trademark registered later, This is because the earlier registered trademark meets the conditions of being able to obtain Community protection before the later registered trademark, Therefore, The owner of the inferior trademark belongs to the provisions of these Regulations 9 The article provides for infringing third parties.

　　Finally, According to the Spanish Supreme Court 2014 years 10 month 14 Day control ECLI: ES: TS: 2014: 5089 A change of position in a decision on a similar dispute, The appellate court in this case applied this interpretation of EU legislation to Spanish national law as well: "The Spanish Supreme Court 2014 years 10 month 14 The European Court of Justice reaffirmed the above principles in the Japanese judgment, This principle also applies to the Spanish national trademark dispute, namely, The owner of a trademark registered in post-Spain shall not invoke the right of use arising from the registration of the trademark, Against the infringement objections raised by the prior registered trademark right holder" .

　　 [comment]

　　The verdict in this case is reconfirmed, The Spanish court threw out the criteria it had always applied to such disputes——The premise for the prior trademark owner to file an infringement lawsuit against the later registered trademark is, The inferior registered trademark right has been declared invalid.

　　For that matter, One thing to note is that, 2019 years 1 month 14 daily "Spanish trademark law (amendment) " (Hereinafter referred to as "new "Spanish trademark law" " ) , Has reflected this change, The amended provisions comply "Directive of the European Parliament and of the Council on the harmonisation of the laws of the Member States relating to trademarks (The first 2015/2436 No) " Pursuit of the principle of unified protection.

　　new "Spanish trademark law" The first 34 Article explicitly states: " (1) The owner of a registered trademark shall enjoy the exclusive right to use the trademark; (2) It shall not prejudice the rights already obtained by others before the application date of the registered trademark or the right of priority... " .

　　In addition, The first 37 The article defines the limitation of trademark rights: "The trademark owner shall not invoke the right of the registered trademark, Against the infringement proceedings brought by other industrial property rights or intellectual property rights holders whose priority date precedes the registered trademark" .

　　On the other hand, No doubt, The owner of the Spanish registered trademark or the EU registered trademark has the right to prohibit others from using the later registered trademark, And the later registered trademark can not give its right holder immunity, This is also an affirmation of the principle of priority.

　　however, Judicial practice (And legislative level) This change in the applicable criteria, It also leads to the legal uncertainty of the registered trademark owner, Although through the registration process to obtain the legal right to use the trademark, However, there is still a risk that the trademark will be sued for infringement because it is identical or similar to the previous trademark. And more importantly, Even if its registered trademark has not been declared invalid, The inferior trademark owner may still be required to pay compensation, The only possible grounds for civil action against infringement are "Actual use of the trademark for more than five years" .

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