An industrial property right grants its proprietor not only “negative” prohibitive rights, but also “positive” rights, which under certain circumstances can be used as defence against claims based on other industrial property rights.

The European Court of Justice has recently decided that such defensive strategy can only be considered against younger designs (judgment of 16/2/2012 – C-488/10 – Cegasa/PROIN). In the given dispute, a company which was sued for a Community design infringement had itself registered a Community design with a later priority in order to defend itself on the basis of the “positive” right of use derived there from. The defendant argued that until such time as the registration of the design having later priority is cancelled, its holder enjoys a right of use, so that the exercise of that right cannot be deemed to be an infringement. This would have meant that invalidity proceedings against a Community design having a later priority had to be instituted before respective cease and desist- as well as damage claims could be legally made.

In its reasoning the European Court of Justice has not actually stated that a “positive” right of use cannot be derived from a registered property right having a later priority. It has rather reasoned with a reference to the Community design registration procedure, which “does not require any substantive examination as to compliance with the requirements for protection prior to registration”, and unlike the Community trade mark registration procedure “does not provide for any stage during which the holder of an earlier registered design can oppose registration”.

The latter consideration implies that with regard to Community trade marks things could be different. However, in contrast to the Community design regulations, the Community trade mark regulations comprise an explicit provision for such “positive” right of use derived from a property right with later priority. That follows from Article 54 (1) CTMR, according to which, “where the proprietor of a Community trade mark has acquiesced, for a period of five successive years, in the use of a later Community trade mark in the Community while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later Community trade mark was applied for in bad faith”. Therefore, since in the present judgement the European Court of Justice has not actually considered this CTMR provision, it is not to be assumed that this provision could be analogously used for Community designs. In contrast to that, the General Court has held a request of proof of use, as it is known from the Community trademark regulations, admissible for a Community design in Community design invalidity proceedings (judgment of 12/5/2010 – T 148/08).