EU court calls last orders on Finnish vodka brand dispute
Exclusive licence to Laplandia and Finntastic brands revoked after ownership was transferred | Ruling hinged on new owner’s missing signature.
An exclusive licence for trademarks was not valid after the marks were transferred to another party because the new owner had not signed the agreement, the EU General Court said on Wednesday (November 22), ending a dispute between Finnish spirit makers.
The ruling was a defeat for boutique distillery Shaman Spirits, which had been trying to revive a trademark licence that was revoked by the EU Intellectual Property Office (EUIPO).
Shaman Spirits, from Tyrnävä, had agreed the licence with the original trademark registrant, Brandavid in 2016. The following year, Brandavid transferred ownership of the marks to another firm, Global Drinks Finland.
The dispute centred on whether Shaman Spirits retained its rights to the licence following the transfer.
The licence was revoked following a challenge from Global Drinks. Shaman Spirits appealed and judges in the Third Chamber agreed with the EUIPO Board of Appeal that the licence did not satisfy the requirements for registration, and ordered Shaman Spirits to pay costs incurred by Global Drinks Finland.
‘An obvious error’
The licence agreement in question covered Shaman Spirits’ use of several EU figurative marks in Classes 31, 32 and 33 of the Nice Agreement, including the ‘Laplandia’ brand and ‘Finntastic’.
Shaman Spirits claimed that when Global Drinks acquired the marks in 2017, it accepted the licence agreement between Brandavid and Shaman. In its application to the EUIPO, it submitted documents that it claimed proved this.
However, Global Drinks disagreed and the dispute was escalated to the EUIPO’s Board of Appeal. The Board determined that the only evidence supporting registration of the licence was an agreement signed by Brandavid and Shaman Spirits in 2016, and that there was nothing to show the licence had been agreed or approved by Global Drinks which was now the registered owner of the marks.
This was “an obvious error attributable to EUIPO under Article 103(1) of Regulation 2017/1001, which warranted its revocation”, the Board said.
Global Drinks Finland had not signed licence agreement
Appealing the decision to the General Court, Shaman Spirits claimed that when the marks were transferred, Global Drinks Finland was aware of the licence, and “accordingly accepted” the granting of the exclusive licence to Shaman.
Furthermore, the licence was granted independently of the ownership of the marks, the drinks maker said.
Shaman Spirits also argued that Finnish national law could be applied, which did not require contracts to be in writing and therefore it was “not relevant” whether Global Drinks had signed the agreement.
In their decision, judges upheld the finding of the EUIPO that the signature or agreement of the registered proprietor is a prerequisite for the valid transfer of a licence and that Global Drinks Finland had not signed the licence agreement.
“The previously registered proprietor was no longer empowered to give the agreement required by the relevant provisions,” they said.
Regarding the application of Finnish law, judges said that the recordal in the EU trademark register of a licence relating to an EU trademark was governed autonomously by EU law in Articles 25 to 28 of that regulation and Article 13 of Implementing Regulation 2018/626.
Shaman Spirits was ordered to pay costs incurred by Global Drinks Finland, including those incurred before the Court of Appeal.
