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Thursday, 3 May 2012

One in the eye from Pie? Or, when is a licence not a licence?

In a post this March, this Kat confessed that he had failed to spot that there was a hearing before the Court of Justice of the European Union in a reference for a preliminary ruling from the Brussels Cour d'appel in Case C-376/22 Pie Optiek v Bureau Gevers, European Registry for Internet Domains since he didn't even know it was in the pipeline (or should that be "pie-line"?).

The facts leading to this reference, as summarised by Séverine Dusollier in her comment on the Kat's earlier post, run as follows: Bureau Gevers acted on behalf of a US company in registering some .eu domain names during the sunrise period (this was a trick used by some non-EU companies to register a .eu domain name under their name or trade mark, since such registration was legally reserved to EU companies). Another company wanted to invalidate the registration of since it held a right in the same name, "lensworld". Its main argument was that only EU citizens and companies could register such domain names. The Belgian court of first instance  validated the registration, considering that Bureau Gevers was a licensee of the US company for that trade mark (licensees based in the European Union are entitled to register in .eu). The question under consideration is whether the notion of "licensee" in the .eu domain name regulation includes a licence given for the sole purpose of registering the trade mark as a domain name.

These are the questions referred:
"Must Article 12(2) of Commission Regulation ... 874/2004 ... laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration be interpreted as meaning that, in a situation where the prior right concerned is a trade mark right, the words 'licensees of prior rights' may refer to a person who has been authorised by the proprietor of the trade mark solely to register, in his own name but on behalf of the licensor, a domain name identical or similar to the trade mark, but without being authorised to put the trade mark to other uses or to use the sign as a trade mark - for example, for the purpose of marketing of goods or services under the trade mark? 
If that question is answered in the affirmative, must Article 21(1)(a) of Commission Regulation ... 874/2004 ... laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration be interpreted as meaning that 'rights or legitimate interest' exist even if the 'licensee of prior rights' has obtained registration of the .eu domain name in his own name but on behalf of the proprietor of the trade mark where the latter is not eligible in accordance with Article 4(2)(b) of Regulation ... 733/2002 ... on the implementation of the .eu Top Level Domain?"
This morning Advocate General Verica Trstenjak indicated that she was not impressed with this cunning ploy to secure the sunrise domain for a non-European company.  According to the Curia press release on which this Kat must rely in the current absence of an English-language text of the Opinion,
" ... despite being described as a ‘Licence Agreement’, the agreement entered into by Walsh Optical and Bureau Gevers is not a licence but a contract for the provision of services, as Bureau Gevers was to obtain registration of the domain name ‘’ for the benefit of Walsh Optical alone – albeit in its own name – in return for payment. It was thus merely required to perform a service. The essential elements of a licence (the licensee’s right to use the trade mark – in this case ‘Lensworld’ – itself on a commercial basis and to defend it vis-à-vis third parties) were absent, however. Bureau Gevers cannot, therefore, be regarded as a licensee eligible to benefit from the sunrise period. 
...  only undertakings and organisations which are themselves established in the EU may request a .eu domain name. The .eu Top Level Domain is intended to provide a clearly identified link with the EU, the associated legal framework, and the European market place. It should enable undertakings, organisations and natural persons within the EU to register in a specific domain which will make this link obvious. 
Against that background, a non-resident undertaking cannot be allowed to circumvent the rules on eligibility by obtaining registration of a .eu domain name by means of a legal construction such as the commissioning of a third party organisation that is established in the European Union and thus an eligible party. 
Since the agreement entered into by Walsh Optical and Bureau Gevers must, in legal terms, be categorised not as a licence agreement but as a contract for the provision of services, and consequently Bureau Gevers was not an eligible party during the sunrise period, EURid must, on its own initiative, revoke the domain name ‘’ allocated to Bureau Gevers".
The IPKat thinks this is good advice and expects the court to follow it, not just because it appears to be technically correct but also because it's in keeping with the generally protectionist sentiments that the Court seems to reflect in all IP matters [except those relating to the free movement of fakes across Europe's borders, snaps Merpel tartly]. He however wonders whether the Advocate General's categorisation of the contract with Bureau Gevers as an agreement for the provision of services, rather than as a licence, usurps the role of the referring court which, to the exclusion of the Court of Justice, has the responsibility for finding facts.

Cat lenses here

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