Community trade mark licences do not need to be registered for licensees to pursue infringers, says EU court

The EU's highest court said 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.

The court was ruling on a point of law central to a case brought before the courts in Germany.

In that case businessman Youssef Hassan has 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 to the company. Hassan had advertised duvets bearing the name 'arktis' for sale on a website. Breiding launched legal proceedings against that activity. The company has a licensing agreement with the owner of the 'arktis' Community trade mark.

Breiding's licensing deal allows the company 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 Düsseldorf said that a Spanish court had previously "taken the view that the licensee can invoke rights vis-à-vis third parties only after the licence has been entered in the Register", according to the CJEU's ruling.

However, 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.