A trademark can designate any products on the market – goods or services. Through it, different goods and services can be distinguished from those of a competitive manufacturer or trader, thus directing the consumer himself. There are cases in which similar or identical trade marks appear on the market, one of which precedes the other. What happens when there is an earlier registered mark?
Тhe Supreme Court of Cassation (SCC) points out that the principle of priority of the earlier trade mark is fundamental in both national and Еuropean Union law. The owner of an earlier trade mark may oppose the registration of a subsequent identical or similar trade mark for identical or similar goods or services within 3 months after the publication of the subsequent trade mark application. If the owner of an earlier does not object during the 3 months term and the subsequent trade mark is registered as a result, the owner of the earlier trade mark has the right to have the subsequently registered trade mark declared invalid. If that right is not exercised, the
owner of the earlier trade mark has a right to lodge an infringement claim to prohibit the use of the later trade mark.
The Marks and Geographical Indications Act allows coexistence of the two trademarks, respectively the loss of the right of the owner of an earlier trade mark to counteract against the later trade mark, only if the owner had tolerated the use of the subsequent mark for five consecutive years, and if the trademark application had been made in good faith.
SCC considers that other restrictions on the right of registered trade mark for the benefit of third parties owning rights to a subsequent trade mark are not provided neither in the European legislation nor in the national legislation.
