Wine Law

32 III.2.2. Legitimate use of the prior trademark Use in good faith is also binding for the owner of the earlier mark, in particular where a new DO or GI is protected and where he wishes to oppose its trademark. 1) Thus, use in good faith is an essential requirement for a trademark filed, registered or established by use before the date of protection of a DO or GI, to continue to be used and renewed notwithstanding the protection of a DO or GI, provided that no grounds for the trademark's invalidity or revocation exist. This condition is required by Article 102.2 of EU Regulation 1308/2013, Article 14.2 of EU Regulation 1151/2012, Article 36.2 of EU Regulation 2019/787 and Article 13.1 of the Geneva Act of the Lisbon Agreement on AOs and GIs, adopted 20 May 2015. An identical requirement of use in good faith is found for trademarks filed before the enlargement of EUTM to new territories pursuant to Article 209 EUTMR. 2) According to Recitals 22 and 23 of the EUTMR: “ It follows from the principle of free movement of goods that it is essential that the proprietor of an EU trade mark not be entitled to prohibit its use by a third party in relation to goods which have been put into circulation in the European Economic Area, under the trade mark, by him or with his consent, save where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods. In order to ensure legal certainty and safeguard legitimately acquired trade mark rights, it is appropriate and necessary to lay down, without prejudice to the principle that the later trade mark cannot be enforced against the earlier trade mark, that proprietors of EU trade marks should not be entitled to oppose the use of a later trade mark if the later trade mark was acquired at a time when the earlier trade mark could not be enforced against the later trade mark ”. As a consequence, the owner of a prior trademark could not assert its rights against a use to which he consented (Art. 15), or acquiesced for a period of five successive year (Art. 61). However, acquiescence should not apply when the trademark was filed in bad faith. Furthermore, the owner of a prior trademark is not admissible in its action, if its trademark was likely to be revoked for non-use at the time the action was initiated and the incriminated