Editor's note: Grüne Welle Wetriebs (Hereinafter referred to as "GWW" ) Is community appearance (no. 0008770030-0001) Exclusive license in Germany (exclusive licence) licensee, But the license was not registered. With the consent of the owner of the appearance of the Community, GWW Sue Thomas Phillips (Hereinafter referred to as "TP" ) The products distributed by the company infringe the Community's right of appearance. Read on for more details!

[background] Grüne Welle Wetriebs (Hereinafter referred to as "GWW" ) Is community appearance (no. 0008770030-0001) Exclusive license in Germany (exclusive licence) licensee, But the license was not registered. basis "Community design Regulation of the European Union (The first 6/2002 No) " (Hereinafter referred to as "European Union regulation 6/2002 No" ) The first 32 article 3 Provision of paragraph (The licensee is allowed to bring an action in his own name under the following two circumstances: Obtain the consent of the owner of the appearance of the Community; or, The owner of the appearance of the Community fails to bring an infringement action within a reasonable time after acquiring the infringement facts) , With the consent of the owner of the appearance of the Community, GWW Sue Thomas Phillips (Hereinafter referred to as "TP" ) The products distributed by the company infringe the Community's right of appearance. The trial court decided TP Lose the case, And identify GWW The right to Sue in their own name. The defendant filed a complaint with the High Court of Dusseldorf (German court of appeal) appeal, claim GWW Do not have the qualification of the subject of litigation. The German Court of Appeal suspended the proceedings, The Court of Justice of the European Union is requested to make preliminary rulings on the two issues involved in the case (preliminary ruling) : 1) A Community appearance permit is not registered, Whether the Licensee can bring a Community appearance infringement action in its own name? 2) If you can, Then can the exclusive licensee claim compensation in his own name, Or they can only participate in the infringement lawsuit brought by the owner of the appearance of the community as a third party and claim compensation?

[discover] "European Union regulation 6/2002 No" The first 33 article 2 Provision of paragraph: "This ordinance 28, 29 and 32 The legal act stipulated in the article (transfer, guarantee (rights in rem) And licensing and so on) After registration, Ability to fight third parties in all members" . For the first question, In accordance with the regulation 33 Literal interpretation of the bar, It seems that a licensee of an unregistered license cannot fight a third party. however, The Court of Justice of the European Union pointed out that the letter of the law should not be interpreted literally, Rather, it should be combined with the specific circumstances in which the provision is applied and the purpose for which it is created. The Court of Justice of the European Union held that "European Union regulation 6/2002 No" The first 33 article 2 Paragraph and clause 3 Paragraph limits the application of the provision to "A third person who has acquired the corresponding rights" . It can be inferred from this, The first 33 The object of application of the provisions of this Article is the third party who obtains the relevant rights after the occurrence of the corresponding legal act, And not a third party who simply committed the infringement. Therefore, The Court of Justice of the European Union replied to the first question, A licensee of an unregistered license, The right to initiate Community appearance infringement proceedings in its own name. A licensee of an unregistered license, Although they have the right to Sue for infringement, But whether they can claim damages in their own name? In accordance with "European Union regulation 6/2002 No" The first 32 article 4 Provision of paragraph, When a Community appearance Licensee participates in an infringement action brought by a Community appearance owner, You can apply for damages. But there are no rules, If the licensee himself initiates infringement proceedings, Whether they can claim damages. As mentioned above, The Court of Justice of the European Union has analyzed the specific circumstances of the application of the provisions, Since the law allows an exclusive licensee under certain circumstances (Obtain the consent of the owner of the appearance of the Community; or, The owner of the appearance of the Community fails to bring an infringement action within a reasonable time after acquiring the infringement facts) To file an infringement suit in their own name, Then the first 32 article 4 Paragraph is interpreted as "A licensee can claim damages only if he participates in an infringement action brought by the right owner" , It makes no sense. The Court also stated that, The above interpretation also contradicts the original intention of the article, namely "To provide a way for licensees to fight against infringements and defend their legal rights" . Therefore, The Court of Justice of the European Union replied to the second question, Where the licensee may bring infringement proceedings in his own name, Allow the licensee to claim damages.

[comment] This case was decided in contrast to the previous EU trademark case (C-163/15) concurrence, The Court of Justice of the European Union reiterated, The licensee of an unregistered license shall have the right to bring an infringement suit. This principle is also with the Commercial Court of Alicante 2011 years 12 month 26 Judgement of day (Case number: ECLI: ES: JMA: 2011: 152) Be consistent with, "European Union regulation 6/2002 No" The first 33 Article intended to regulate, The relationship between the Licensee and the third person who acquires the rights from the owner of the Community appearance or the owner of the trademark after the licensing has taken place.

author: Joaquín ROVIRA, Compiled by lawyer Elsabry: Li Fangqian, Esaberi intern proofread: Liu Dan, The source of Aisabri Legal Counsel: Esabaril (ELZABURU) Intellectual property rights