Protection of trade names in the case law of the CJEU

In preliminary ruling proceedings in case C-365/24, the Court of Justice of the European Union dealt with trademark law and the protection of trade names. The case concerned a dispute between Doggy AB, a company incorporated under Swedish law and engaged in the manufacture of pet food and other products for animals, and another Swedish company, Purefun Group AB, which sold dog treats under the domain name ‘doggie.se’ and used the name ‘DOGGIE’ in the conduct of its business.

The Swedish court held that under Swedish law a trade name enjoys protection comparable to that afforded to a trademark. In particular, it is possible to prohibit a third party from using an identical or similar sign for products or services that are identical to those relating to the activity for which the trade name is registered.

However, obtaining this protection is significantly easier in the case of a trade name – unlike the process of registering a trademark, which requires a detailed description of the products or services, a trade name is sufficient only to indicate the subject matter of the business, which is often very general. Moreover, a trade name is not subject to the requirement of proper and continuous use, the failure to comply with which may lead to the revocation of the exclusive right of its owner.

The preliminary question was therefore whether such a right attached to a trade name is compatible with the principle of free movement of goods and services and, if not, whether the owner of the trade name is entitled to prohibit third parties from using a similar sign.

As European law only harmonises the rules on trade marks and not on trade names, the Court of Justice stated that it could not fully assess the conflict between two trade names or domains. However, the broad protection afforded by Swedish legislation to trade names may, in his view, constitute an obstacle to the free movement of goods – one of the fundamental pillars of the European Community.

In general, however, the Court concluded that, provided that the conditions for the possible revocation of the exclusive right granted by the trade name are clearly defined and that the nature of the activities falling within the object of the business is sufficiently precisely described, the European regulation contained in Directive 2015/2436 does not prevent the owner of a trade name from prohibiting a third party from using a similar name as a trade name or domain name for products or services identical to the object of its business.

In relation to the Czech legislation, there is no need to address the issue, as the Czech law does not grant such an exclusive right to a trade name and to protect a unique sign, it is necessary to register a trademark.