Contact: Ben Evans; Blake Morgan LLP (Southampton, England)
The CJEU has ruled on whether a licensee of a Community Trade Mark ("CTM") needs to register the licence with the OHIM before they can bring an action for infringement of the licensed marks.
The position in the UK is very simple, under Section 25(3)(b) of the Trade Marks Act 1994 ("the Act"), a licensee of a UK mark needs to register the licence, with the UK IPO, before they can sue for infringement. However, the position in respect of a CTM has always been slightly less clear-cut and this very issue recently came before the German courts.
In that case the licence gave the licensee the ability to bring infringement actions, in its own name, in respect of the licensed marks. The licensee did just that and brought proceedings, against an alleged infringer, for infringement of the mark. However, the licence had not been registered with the OHIM and accordingly the German court looked to the CJEU for clarification of whether this prevented the licensee from bringing proceedings for infringement of the licensed mark: Youssef Hassan v Breiding Vertriebsgesellschaft mbH, Case C‑163/15.
The CJEU ruled that the licensee could bring proceedings for infringement of the licensed mark, interpreting the CTMR as requiring only the licensor's consent (Article 22(5)), not registration of the licence. The purpose of Article 23(1) CTMR was to protect a person who had, or might have, rights in a CTM as an object of property, not to allow third party infringers the opportunity to sidestep an infringement action brought by a licensee.
Comment
The CJEU's decision will allow licensees of CTMs to breathe a sigh of relief knowing that if they have overlooked registration of their license then it won't prevent them from enforcing the licensed mark(s) (provided they have the licensor's consent).
However, it is still important for all licensees to ensure that their licenses are registered, whether they are for CTMs or UK marks. This is in order to protect the licensee in relation to the grant of further licenses or the sale of the marks by the owner, or other conflicting interests. Furthermore, and as mentioned above, this ruling deals only with CTMs and, accordingly, a licensee of a UK mark must still register that licence with the IPO if they wish to enforce the marks (Section 25(3)(b) of the Act).
