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Tuesday, 19 May 2015

Hassan hassle? CJEU asked to rule on effect of non-registration of Community trade mark transaction

Any word with three consecutive "s"s in it is bound to attract this word-loving Kat's attention, and Prozessstandschaft falls into that category. That word makes its debut on this weblog in Case C-163/15 Hassan, yet another trade mark case that is heading from a national court in Europe to the Court of Justice of the European Union (CJEU), seeking an answer to a question that will bind not only that court but all the other courts in the EU in which trade marks are litigated. The referring court this time is the Oberlandesgericht Düsseldorf (Germany) and the questions posed are two in number:
1. Does the first sentence of Article 23(1) of Council Regulation 207/2009 on the Community trade mark preclude a licensee who is not entered in the Register of Community trade marks from invoking claims for infringement of a Community trade mark? [Referring to the provisions of the Regulation that permit transfer, securitisation and licensing, the first sentence of Article 23(1) states that "... such an act, before it is so entered [in the Register of Community trade marks], shall have effect vis-à-vis third parties who have acquired rights in the trade mark after the date of that act but who knew of the act at the date on which the rights were acquired"]. 

2. In the event that the first question is answered in the affirmative: Does the first sentence of Article 23(1) of Council Regulation 207/2009 preclude a national legal practice in accordance with which the licensee can enforce the trade mark proprietor’s rights against the infringer by virtue of the power conferred on it for that purpose (Prozessstandschaft)?
As usual, the UK Intellectual Property Office would love to hear from you if you have any wise words that would help it decide whether the UK should participate in these proceedings. Just email by 26 May 2015 and tell them what you think.

This Kat has long wondered about the virtues of registration of trade marks and entitlements.  Is the maintenance of a register of transactions and rights in trade marks for the benefit of (i) the consuming public at large, (ii) prospective assignees, licensees and lenders who want to know who else may have an interest in those rights, (iii) the national tax authorities, (iv) other traders who want certainty as to the nature of their competitors' rights or (v) infringers? He also wonders whether a register should be merely an information-providing convenience or whether it should be constitutive of rights as well. If we're lucky No doubt the decision of the CJEU will clarify the function of the Register for the benefit of us all.

Merpel would love to know about the factual background to this reference. Can some kind person please fill her in on the juicy details?


Meldrew said...

I have always liked auspuffflamme, despite not being a Motörhead.

Meldrew said...

In fact such repeated letters can Jää äär


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