France: licensing and CTM rights


Aurélia Marie

In a decision on February 4, the Court of Justice of the European Union (CJEU) ruled in proceedings concerning the infringement of a Community trademark (CTM) that were brought by the CTM’s licensee. In the case in question, which started in Germany, the licensing agreement allowed the licensee to file a suit in its own name for acts of infringement.

In the first instance judgment, the defendant, which had been sued 
for trademark infringement, was ordered to provide information, to withdraw all infringing goods from the market and to proceed with their destruction. Additionally, the defendant was ordered to pay compensatory damages.

The defendant appealed against the decision, arguing that the trademark owner’s consent to the licensee to file an infringement action was not sufficient considering that the licensing agreement was not recorded in the Community register, as required by article 23 §1 of Council Regulation (EC) No. 207/2009 (trademark regulation).

This is the legal framework that gave rise to the submission of a request by the Düs​seldorf Oberlandsgerischt for a preliminary ruling by the CJEU.

The court recalled that article 23 §1 provides that: “Legal acts referred to in articles 17, 19 and 22 … shall have effects vis-à-vis third parties in all the member states only after entry in the register.” It underlined the need to define the “legal acts” governed by the provision in order to determine whether infringement acts fall within the scope of the definition of “legal acts” in article 23 §1.

In fact, those acts are the transfer of rights (article 17), the constitution of a security using a CTM or another right in rem using a trademark (article 19), and the grant of a licence (article 22). Those acts all aim to create or transfer a right in rem to a CTM. They only concern the creation of a right, not the licensee’s right to file an infringement action.

"the CJEU decided that a licensee’s right to file an infringement action is not conditional on the licensing’s agreement’s being previously recorded in the Community register."

However, only article 17 §6 provides that in order to invoke a right to a CTM, it must be recorded in the Community register. Articles 19 and 22 do not provide for such a requirement.

According to article 22.3 of the trademark regulation, the right of a licensee to start litigation in relation to trademark infringement is subject to the consent of the trademark owner only. In addition, article 22.5 of the regulation provides that the recording of the licence is done at the request of one of the parties. This article does not provide dispositions similar to article 17, according to which the assignor cannot claim the rights deriving from the CTM if the assignment is not recorded in the register.

Finally, turning to the purpose of the rule of article 23.1 of the regulation, not being able to oppose third parties to the legal acts mentioned in articles 17, 19 and 22 of the regulation that were not recorded is to protect those who may have rights to the CTM as an object of property. It cannot apply to a situation where an infringer violates the CTM rights.

As Advocate-General Melchior Wathelet said in the case: “Making registration a formal requirement such that failure to comply with that requirement would allow an infringer to claim that infringement proceedings brought by the licensee were inadmissible would be at odds with the objective pursued by the registration.”

Consequently, the CJEU decided that a licensee’s right to file an infringement action is not conditional on the licensing’s agreement’s being previously recorded in the Community register.

As a result, the court did not have to answer the second question: “Does the first sentence of article 23 §1 of the regulation preclude a national legal practice whereby the licensee can enforce the trademark proprietor’s rights against the infringer by virtue of the power conferred on it for that purpose ...?”

Aurélia Marie is a partner at Cabinet Beau de Loménie. She can be contacted at:

Aurélia Marie, Cabinet Beau de Loménie, CTM, trademark, community register,