Editor's note: Breiding Vertriebsgesellschaft mbH company (Hereinafter referred to as "Breiding company" ) It's a word trademark "ARKTIS" Licensee of. Although this trademark license is not registered in the EU trademark Registry, Subject to this license agreement, Breiding A company may bring a trademark infringement action in its own name. so Breiding Corporate action Hassan Mr. Will without permission "ARKTIS" Trademarks are used on goods, Infringement of its trademark rights.

[background] Breiding Vertriebsgesellschaft mbH company (Hereinafter referred to as "Breiding company" ) It's a word trademark "ARKTIS" Licensee of, Designated for use on merchandise such as bedding and blankets. The trademark license is not registered with the EU Trademark Registry. Pursuant to this license agreement, Breiding A company may bring a trademark infringement action in its own name. Breiding Corporate action Hassan Mr. Will without permission "ARKTIS" Trademarks are used on goods such as duvets, Infringement of its trademark rights. The court of first instance ruled in favor of the plaintiff's claim. The defendant appealed, Consider in accordance with "Eu trade mark regulation" The first 23. 1 Provision of article, The EU trademark licensing Agreement is not registered, Breiding Company as licensee, It is not qualified to bring trademark infringement proceedings. The court of appeal decided to stay the proceedings, And asked the European Court of Justice to make a preliminary ruling on the relevant issues in the case.

[conclusion] First of all, The European Court of Justice pointed to separate reading of the articles at issue, Can be interpreted as, If a license is not registered, The licensee shall not use its own name against the third party infringing the trademark rights according to the content of the license agreement. but, The European Court of Justice added, Eu law should not be interpreted solely on the letter of its provisions, It should consider both the content of the provisions and the purpose of the legislation. From this point on, The court held that "Eu trade mark regulation" The first 23. 1 The purpose of this article is to protect those who have or may enjoy EU trademark rights. Therefore, European court of justice ruling, The requirement that the license agreement must be registered does not apply to the situation where the third party has violated the trademark right. "Eu trade mark regulation" The first 23. 1 Article shall be understood as, Even if the trademark license agreement is not registered, The licensee may still bring an action on the fact that the licensed trademark rights have been infringed.

[comment] The courts in the Member States are interested in "The licensee brings trademark infringement action in its own name, Whether the trademark license must be registered first" dispute, There have been different ways of dealing with it. The Spanish courts had held that it should be registered, And accordingly dismissed several such suits brought by unregistered licensees. Specific to the EU trademark dispute, The Alicante Court of Appeal serves as the European Union trademark court in Spain, Similar decisions have been made (For example, 2009 years 1 month 23 Japanese pair ECLI: ES: APA: 2009: 425 Case number, 2013 years 1 month 22 Japanese pair ECLI: ES: APA: 2013: 291 Case number, and 2014 years 1 month 30 Japanese pair ECLI: ES: APA: 2014: 246 The judgment in the case of No) . In this case, The European Court of Justice clarified the interpretation of the relevant law in its ruling, Will no doubt be welcomed by licensee and relevant legal practitioners. From this case, The national courts of Spain and other member States which have given different interpretations of the above-mentioned provisions of law, They need to adjust their standards for handling such disputes. It's worth noting, 2015 years 7 month 25 The announcement of the new "Spanish patent law" Since it came into force, Spanish registered trademark and EU registered trademark in the face of such disputes, Will be dealt with in different ways. new "Spanish patent law" The first 117. 1 Article explicitly states, Only after the patent license agreement is registered, Licensees have the subject qualification to bring infringement proceedings. basis "Spanish trademark law first supplementary clause" , The above provisions also apply to trademark provisions. In another case after that (2016 years 6 month 22 day "Thomas Philipps" case, Case number: C-419/15) , The European Court of Justice judgment extends the above principles to the Community Design Regulation. In the judgment of the case, The European Court of Justice has not only reaffirmed that a licensee whose use license is not registered can bring a design infringement suit, And it is clear that the licensee can claim damages in his own name in such infringement action.

compile: Liu Dan, The source of Aisabri Legal Counsel: Esabaril (ELZABURU) Intellectual property rights