Who controls a jointly owned trade mark?
Updated: Feb 1
Advocate General Manuel Campos Sánchez-Bordona of the Court of Justice of the EU has published his Opinion in a case referred from the Italian Supreme Court of Cassation which raises questions about joint ownership of trade marks (Case C-686/21).
The dispute concerns a trade mark for "Legea" for sports goods. The original Italian trade mark registration was jointly owned by a number of individuals in the same family, who agreed to assign the trade mark to a company. One of the joint owners is now seeking to terminate that assignment and subsequent licences that were made by the company.
The Supreme Court asked the CJEU to interpret Article 10 of the 2015 Trade Marks Directive and Article 9 of the 2017 EUTM Regulation. Specifically, it asked whether an assignment requires a majority or unanimous decision and, if unanimity is required, whether one of the joint owners can subsequently withdraw from that decision.
Advocate General Opinion
In his Opinion, the Advocate General said that the relevant legislation should be interpreted as meaning that, in the case of joint proprietorship, “the formation of common consent on the part of the joint proprietors to grant a third party a licence to use a national or a European Union trade mark, or to terminate that licence, is governed by the applicable provisions of the Member State”.
Addressing the first question, the Advocate General noted that EU law does not stipulate the conditions that apply to the conclusion or termination of licence agreements for EUTMs, concluding: “That silence implies that those conditions are to be governed by national law, both where the EU trade mark is owned by a sole proprietor and where it is shared by several persons.”
The same considerations apply to national marks in the same way. Therefore, a collective intention should be formed in order to assign the use of a jointly owned trade mark. Whether this occurs depends on national legislation – either by reference to any agreements between the parties or to the general civil law provisions of the Member State.
On the second question, the AG said it was clear that consent to use a mark could be revoked:
“It is, therefore, for national law to lay down rules governing the specific features of agreements to revoke or withdraw a licence to use a jointly owned trade mark. The arguments set out above regarding the formation of collective consent to grant a licence to use a national mark or an EU mark are applicable mutatis mutandis to such revocation or withdrawal.”
We look forward to the Court’s judgment in this interesting case, to find out whether or not it follows the Advocate General’s reasoning.
If the Court does follow it, there may be implications for joint owners of trade mark rights in Europe. For example, they may need to consider which EU Member State’s law should apply to their joint ownership agreement as well as which terms to include in the agreement regarding joint decisions to assign or terminate a licence.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - email@example.com