Exclusive right trade mark holder upon lapse of consent to shared use with third party
19-11-2013 Print this page
National court may not limit exclusive right in a manner which exceeds limitations arising from Articles 5 to 7.
"55. Consequently, save for the specific cases governed by Article 8 et seq. of that directive, a national court may not, in a dispute relating to the exercise of the exclusive right conferred by a trade mark, limit that exclusive right in a manner which exceeds the limitations arising from Articles 5 to 7 of the directive."
Upon lapse of trade mark proprietor’s consent to shared use with a third party, proprietor should be able to assert the exclusive right conferred upon it by those marks against that third party and exercise that exclusive right in respect of the goods.
"63. Article 5 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, as amended by the Agreement on the European Economic Area of 2 May 1992, precludes a proprietor of trade marks which, in a situation where there has been use shared with a third party, had consented to the use by that third party of signs which are identical to its marks in respect of certain goods in classes for which those marks are registered and which no longer consents to that use, from being deprived of any possibility of asserting the exclusive right conferred upon it by those marks against that third party and of itself exercising that exclusive right in respect of goods which are identical to those of that third party.
60. If, which it is for the referring court to examine, Gauquie is to be regarded, since the expression by Martin Y Paz of its wish to exercise its exclusive right against it, as using signs which are identical to Martin Y Paz’s trade marks without its consent, it is a matter for that court, in accordance with what has been stated in paragraph 58 of the present judgment, to assess whether, in the circumstances of the present case, that use adversely affects or is liable adversely to affect one of the functions of those marks. If it were established that such a detriment or risk of detriment exists, it would have to be held that depriving Martin Y Paz of the possibility of exercising its exclusive right against that use by Gauquie exceeds the limitations arising from Articles 5 to 7 of Directive 89/104."
Complete harmonization of trade mark rules in Articles 5 to 7 of Trademarks Directive.
"54. It is important to bear in mind, at the outset, that Articles 5 to 7 of Directive 89/104 effect a complete harmonisation of the rules relating to the rights conferred by a trade mark and accordingly define the rights of proprietors of trade marks in the European Union."
IPPT20130919, CJEU, Martin Y Paz v Fabriek Maroquinerie Gauquie
C‑661/11 - ECLI:EU:C:2013:577
