WIPR survey: CJEU’s CTM licensing ruling was correct
The Court of Justice of the European Union (CJEU) was right to rule that a Community trademark (CTM) licensee can enforce a mark even if the licensing agreement is not registered at the Office for Harmonization in the Internal Market (OHIM), WIPR readers have claimed.
For WIPR’s most recent survey, we asked whether the CJEU was correct to rule in favour of German furniture company Breiding Vertriebsgesellschaft.
Breiding had sought relief from rival company owner Youssef Hassan, who had been using the term ‘Arktis’ in connection with beds and covers.
The Germany company had been granted a licence to use the CTM by a company called KBT & Co in 2011, though the agreement was not registered at OHIM.
Breiding filed a claim against Hassan over the misuse of the CTM. Despite an initial victory at a lower court, the Higher Regional Court of Düsseldorf was unsure whether Breiding could bring a valid claim due to the deal not being registered at OHIM.
It referred the case to the CJEU on whether such a deal can be enforced by a licensee.
The CJEU sided with Breiding, stating that a “licensee may bring proceedings alleging infringement of a CTM, which is the subject of the licence, although that licence has not been entered in the register”.
Three quarters of respondents to the survey agreed.
One respondent said that OHIM’s registry contains “declaratory content only”, meaning it “may not necessarily be in line with the material law”.
Another said. “If a company chooses not to ‘register’ a legal document that is binding on parties then there should be no adverse effect on the parties with it being enforceable in court.”
It added: “The only thing that should be a concern is that the trademark is being used correctly and the registered owner allows the trademark to be used.”
For this week’s survey, we ask: “Last week, we reported that the US Court of Appeals for the Federal Circuit said the Patent Trial and Appeal Board is not required to review all of the patent claims challenged by a party in an inter partes review petition. Do you agree with that ruling?”
