9 May 2016Jurisdiction reportsAurélia Marie

France: licensing and CTM rights

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.

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