A registered trade mark, whether nationally, as a European Union trade mark or under an international registration, generally enjoys protection from misuse by other individuals or entities which is inherent to that registration. For one, a registered trade mark holder may oppose an application for an EU trade mark based on similarity, as well as seek invalidity of a similar trade mark under the provisions of EU law, based on it being an earlier trade mark. However, countless trade marks are in use and not registered at all. What sort of protection is afforded at EU level, to such non-registered trade marks in the event of an alleged similar trade mark being registered or applied for?
Article 8(4) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (“EU Trade marks Regulation”) provides for the main conditions to be satisfied for a trade mark applied for to be prohibited from being registered in the event that an earlier non-registered trade mark opposes the application.
In view of the above-mentioned provision, EU jurisprudence has generally established that four conditions must be satisfied in order for a non-registered trade mark to possibly be used to oppose registration of an EU trade mark, and this whether still at application stage or whether already registered by way of an invalidation of the already registered trade mark. These cumulative conditions, as confirmed in the Greyleg Investment Ltd case, decided in 2016, are as follows:
- The mark must be used in the course of trade;
- It must be of more than mere local significance;
- The right to that mark must have been acquired in accordance with the law of the member state in which the mark was used prior to the date of application for registration of the EU trade mark, or its priority date; and
- The mark must confer on its proprietor the right to prohibit the use of a subsequent trade mark.
Establishing the presence of such conditions is not so straightforward. In the Greyleg Investment Ltd case, the European General Court reiterated that the first two conditions mentioned above are interpreted in accordance with EU law and are quite apparent. The other two conditions, however, are to be assessed in view of the law governing the mark relied on. This means that only the law in question, usually a specific national law, may determine whether the trade mark alleging earlier use does in fact predate the EU trade mark being contested. Of course this infers that upon differing legislation, diverse outcomes to such cases are to be expected, which in itself, creates uncertainty for the holders of non-registered trade marks. However, such ambivalence must be somewhat inherent to the fact that a trade mark is not registered and therefore, left somewhat unprotected.
The European General Court has stated that it is up to the opponent, therefore the applicant, to establish that the mark concerned falls within the scope of the national law and that this allows the use of a subsequent trade mark to be prohibited. This means that the opponent itself must seek out the national law and prove to the deciding court in question that, under its governing national law, the non-registered trade mark holds an adequate level of protection as a ‘trade mark’ even if non-registered, as well as that the trade mark being opposed may be disallowed on the strength of the prior non-registered trade mark.
The onus of proving that the law in question supports such opposition is therefore clearly put on the opponent. The European General Court expects “particulars establishing the content of that law”. In fact, in the ANIMAL case, decided in 2016, the General Court stated that in the case of this application for invalidity based on a non-registered earlier mark, the applicant had not provided the evidence relating to the content of the national law on which the application relied on. In fact, the applicant had pointed out that he had made use of the word mark ANIMAL for several years within the territory of the European Union, in more than one member state, and had provided evidence of such use throughout the years. However, the applicant had not provided details as to the provisions of the law on which basis the invalidity was being sought. This is one of the major differences between proving an opposition or an invalidity application when the earlier mark is registered versus when it is not registered. Under Article 8(4), the question as to whether a subsequent trade mark may be disallowed or prohibited on the basis of a non-registered earlier mark must be answered in accordance with the national law on the basis of which the earlier mark is in use. This evidence must be brought by the applicant in detail in an opposition or invalidity procedure under the EU Trade marks Regulation. In the above mentioned case, thus, the plea was rejected on the basis of lack of evidence and not on strict merit.
Another element to take into consideration is that national laws of different member states are not fully harmonised when it comes to national procedures with regard to trade marks, their registration and protection, or otherwise. For example, Maltese legislation does not provide for an opposition procedure once an application for a trade mark is published, as is existent under EU law for EU-registered trade marks. A remedy for the owner of an earlier registered trade mark is provided for once that trade mark is registered by way of infringement proceedings. Interestingly, a Maltese registered trade mark is not deemed to be infringed by the use in the course of trade in Malta of an earlier right. The definition of an ‘earlier right’ states that an earlier right for these purposes is a non-registered trade mark continuously used in relation to goods or services by a person or his predecessor in title from a date prior to whichever is the earlier of the use of the first-mentioned trade mark, or, the registration of the first-mentioned trade mark, in respect of those goods or services in the name of the proprietor or his predecessor in title; and, an earlier right shall be regarded as applying if, or to the extent that, its use is protected by virtue of any rule of law. Furthermore, under Maltese law, the registration of a trade mark may, unless the proprietor of that earlier trade mark/right has consented to the registration, be declared invalid on the ground that there is an earlier right in accordance with the definition at law. The trade mark may also not be registered in the first place because of the above. Therefore, it may be presumed that an opponent may use the basis of these provisions in an action under EU law when the non-registered mark is used by its proprietor in Malta (although its use must not be of mere local significance then) and therefore, the elements of EU law to be satisfied would need to be proven in conjunction with Maltese law. However, it is then up to the EU judicial bodies to interpret the law, as demonstrated in evidence by the applicant, as applied to the circumstances of the particular case.
UK law also seems to provide for a level of protection of non-registered marks and this basis, known as the ‘passing-off’ rule, has been used by several applicants through the years. EU jurisprudence has recognised the three elements of goodwill, misrepresentation and damage or likelihood of damages, to be the basis of this UK national law. Therefore, these elements must be shown satisfactorily in order to prove that the registered (or applied for) trade mark must not be allowed as it infringes on the rights of an earlier non-registered trade mark. Consequently, these same elements must be proven by the applicant in front of the relevant EU Court so that such a claim under Article 8(4) is accepted.
Although not in a harmonised manner, various EU member states may offer a level of protection to non-registered trade marks in their territories. However, the elements and criteria that make up such protection differ and may only be taken into consideration by an EU judicial body once proven by the applicant in a case based on Article 8(4) of the EU Trade marks’ Regulation. Therefore, it is clear that the level of protection for non-registered trade marks which are in use is not up to par as those which are registered whether nationally or at EU level. This seems quite logical since registered trade marks would enjoy additional protection under both national and EU law in virtue of their registration, yet, endless trade marks around Europe remain non-registered. In fact, several public authorities have put forward campaigns targeting the registration of trade marks by emphasising the advantages inherent to registration. The Maltese commerce authority, for example, has put forward publicity and awareness campaigns encouraging businesses to protect their assets and register their trade marks currently in use. The reasons behind such a statistic may be multiple, be it from apathy to disinterest, to ignorance or the belief that no protection, by way of registration, is required for their business and mark. After all, the different national procedures and a somewhat existent, although murky, protection for non-registered marks may leave the impression that businesses’ non-registered marks are already sufficiently protected and no further rights are required. Such a belief is not, however, fully condoned in practice.
BR IP Holder LLC v OHIM with the other party being Greyleg Investment Ltd, Case T-62/14, decided by the General Court (Ninth Chamber) on 21st January 2016, Paragraph 19.
 Ibid. Paragraph 23.
 Universal Protein Supplements Corp. v EUIPO, with intervener being H Young Holdings plc, Joined Cases T-727-14 & 728/14, decided by the General Court (Fourth Chamber) on 29 June 2016, Paragraph 27
 Trademarks Act (Chapter 416 of the Laws of Malta), Articles 14 – 20
 Ibid. Article 11 (3)
 Ibid. Article 43 (2)
 Ibid. Article 6 (4)
 Tresplain Investments Ltd v OHIM with intervenor Hoo Hing Holdings Ltd, Case T-303/08 decided by the General Court on the 9th December 2010 wherein the General Court dismissed an appeal claim which was already decided by the Board of Appeal and wherein the Board had analysed the circumstances of the case within the context of UK law and assessment of all three elements.