Not Prior in Time, But Superior in Right – How Trademark Registrations Can be Affected by Third-Party Interests in a Sign

Abstract

Trademark law relies on the principle of priority: The person first filing for registration (or, depending on the legal system, the person first using a sign) becomes the owner of the right within the territory where the filing (or use) took place. However, in certain exceptional cases priority is discarded vis-a-vis superior interests of third parties. International law explicitly recognizes two such constellations, namely protection of well-known marks (Article 6bis Paris Convention) and unauthorized registration by an agent or representative (6septies Paris Convention). Furthermore, it is widely acknowledged that the priority principle may not apply if a mark is filed in bad faith. The article presents all three constellations from an international and European legal background, including a discussion of the Commission proposals for reform of European trade mark law. It is argued that while the current law as well as the proposals go beyond what is necessary to comply with international obligations in regards of Article 6septies and application in bad faith, they do not live up to the required level when it comes to well-known marks. Nevertheless, in spite of certain deficiencies, it is also shown that European trademark law in its current state as well as in view of the envisaged reform proposals presents a fairly comprehensive panoply of options for protection of superior interests in a sign in spite of lacking registration.