The very recent case of Youssef Hassan v Breiding Vertriebsgesellschaft mbH, Case C 163/1 last week provided a timely reminder of the importance of registering domestic and international trade mark licences with the relevant authorities to ensure that subsequent enforcement action can be taken. In this case, the ECJ ruled last week that the first sentence of Article 23(1) of the CTM Regulation meant that a licensee may bring proceedings alleging infringement of a licensed CTM even though the licence had not been recorded in the register of CTMs at OHIM.
Licensees of UK national trade marks will already be aware of the need to register their trade mark licence before they can sue for infringement (section 25(3)(b), Trade Marks Act 1994) and the ECJ was asked to consider the position with regard to licences granted in respect of Community Trade Marks.
This case and the subsequent ECJ ruling may provide comfort to licensees of CTMs that have perhaps overlooked the need to register their licences, but licensees should nevertheless always seek to register their licences to protect themselves in relation to the grant of further licences or the sale of the CTMs by the owner, or other conflicting interests.
If as a trade mark owner you are granting licences to third parties, or as a licensee you wish to enforce the rights granted to you under your licence, you will need to register your licence at the appropriate Trade Marks Registry. If you need any assistance, please contact Laura Trapnell or Arezou Rezai in our Intellectual Property team.