Recordal Of License Agreement Euipo

The ECJ recently clarified that, unlike cases where, in some EU legal systems, licensees may initiate infringement proceedings on the basis of an EU trademark („EUTM“), regardless of whether the licence has been notified to EUIPO, infringement proceedings may be initiated on the basis of an EU trademark („EUTM“). The order of the European Court of Justice has the effect of improving clarity and safety for licensees and, by analogy, for holders of real rights to the EUTM and, possibly, to registered Community designs (RCD). The licensee still needs the consent of the trademark holder to initiate infringement proceedings, unless the licence is exclusive and the licensee has not acted at the formal request of the licensee. The opt-out is provided if the owner of the brand does not wish to own a comparable British brand. However, it is not possible to opt out if the mark was used in the UK by the registered owner or with his consent; Whether the mark is subject to a transfer, license, security interest or other agreement or document; or where proceedings are under way on the basis of the similar British mark. When an EU trademark is sold before 1 January 2021 that is not registered in the UNION register, the similar British mark is established in the name of cedar. After January 1, 2021, both the assignee and the assignee have the right to apply to UKIPO for the registration of the assignee as the holder of the british similar trademark. Whether a national trademark licence, in order to be effective vis-à-vis third parties, requires the registration of the licence with the relevant national trademark office depends on national trademark law. In its decision (C-163/15), the Court of Justice clarified that EUM`s licence should not be covered to allow a taker to apply for infringement. The Court of Justice held that, unlike cases where the new holder of a Union trademark wishes to take legal action following a transfer to that trademark, the legislation does not require registration. The Court of Justice held that, although this is not reflected in a literal interpretation of Article 23, paragraph 1, of the Community Trademark Regulation (now the EU Trademark Regulation), this is the result of a systematic and teleological interpretation of the legislation in this area. While the German courts found that registration was not necessary, the Spanish courts rejected the taker`s claims, finding that the taker had no right to assert those rights if the licence had not been covered.

The Court of Appeal in Dusseldorf therefore requested clarification from the ECJ. Different requirements for registration registers in Member States are important: regardless of the present ECJ decision, it is always very well advised to include all licences and trademark orders in the corresponding register.

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