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that Member State's obligations to protect the trade name under Art 8 of the
Paris Convention and Art 2(1) of the TRIPS Agreement.
165
6.162
The Court observed that it is apparent from the examinations to be carried out
by the national court that the use made of the trade name falls within the scope
of the first sentence of Art 16(1) of the TRIPS Agreement; the proprietor of the
trade mark has an exclusive right to prevent such use, subject to the provisions
of Art 17 of that Agreement.
166
However, the third sentence of Art 16(1) of the
TRIPS Agreement provides that that exclusive right must not prejudice any
'existing prior right' which the Court took to mean that, where the proprietor of
a trade name has a right falling within the scope of the TRIPS Agreement
which arose prior to that conferred by the trade mark with which it is alleged to
conflict and which entitles him to use a sign identical or similar to that trade
mark, such use cannot be prohibited by virtue of the exclusive right conferred by
the trade mark on its proprietor under the first sentence of Art 16(1) of the
TRIPS Agreement.
167
4. Protection of trade names
6.163
The Court in Case C-245/02
Anheuser-Busch Inc v Bud˘jovický Budvar
168
observed that a trade name is a right falling within the scope of the term
'intellectual property' within the meaning of Art 1(2) of the TRIPS Agreement.
Article 2(1) of the TRIPS Agreement expressly incorporates the protection of
trade names, for which specific provision is made in Art 8 of the Paris
Convention, and thus the ECJ ruled that the members of the WTO are under
an obligation to protect trade names.
169
6.164
Applying Art 8 of the Paris Convention the ECJ noted that the protection of
trade names may not be made subject to any registration requirement.
170
6.165
In referring to the specific issues raised by the case it concluded that a trade
name which is not registered or established by use in the Member State in
which the trade mark is registered and in which protection against the trade
name in question is sought may be regarded as an existing prior right within the
meaning of the third sentence of Art 16(1) of the TRIPS Agreement if the
proprietor of the trade name has a right falling within the substantive and
165
Ibid, at para 86.
166
Ibid, at para 87.
167
Ibid, at para 89.
168
[2005] ETMR 286.
169
Ibid, at para 92.
170
Ibid, at para 96.
