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Trade Mark Licence Does Not Need to Be Registered

Written by Thomas Mould on 11 February 2016

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Businesses that obtain licences to use Community trade marks do not need to register those licences to legitimately pursue others for infringement of those marks, the Court of Justice of the EU (CJEU) has ruled.

The CJEU has ruled that Community trade mark licensees can take enforcement action even if their licences have not been registered so long as they have the trade mark owner's consent to assert such rights of enforcement.

Youssef Hassan challenged a court decision that ordered him to destroy goods that infringed on Community trade mark rights exercised by Breiding Vertriebsgesellschaft (Breiding) and to pay damages. Hassan had advertised duvets bearing the name 'arktis' for sale on a website. Breiding launched legal proceedings against that activity.

Breiding's has a licensing agreement with the owner of the Community Trade Mark. This licensing deal allows the Breiding to "assert, in its own name, rights arising from infringement of the trade mark", which covers bedding and blankets. However, a court in Düsseldorf asked the CJEU to confirm whether Breiding was entitled to bring infringement proceedings against Hassan since it had not registered its licence in the Register of Community trade marks.

The CJEU confirmed that because Breiding had the consent of the Community trade mark owner to do so, it is entitled under EU trade mark laws to assert those rights of enforcement.

"[EU Community trade mark laws] must be interpreted as meaning that the licensee may bring proceedings alleging infringement of a Community trade mark which is the subject of the licence, although that licence has not been entered in the Register of Community trade marks," the CJEU ruled.

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