Hassan v Breiding is a CJEU referral from a German domestic case concerning trade mark infringement action brought by Breiding, the unregistered licensee of the trade mark ‘ARKTIS’ for bedding and blankets, against Hassan. The CJEU was asked by the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) does Article 23(1) of Council Regulation (EC) No 207/2009 (the ‘EU TM Regulation’) require a trade mark licence to be registered to enable the licensee to bring action for trade mark infringement?

Art 23(1) EU TM Regulation provides:

“Legal acts referred to in Article 17, 19 and 22 concerning a Community trade mark shall only have effects vis-à-vis third parties in all the Member States after entry in the Register.”

The CJEU stated that given a plain reading of the regulation a licensee would need to be registered to bring action from infringing an EU trade mark against a third party. However, the court said when interpreting EU law not only the wording but the context and objective of the legislation must be considered and accordingly, in situations such as those in the main proceedings, a trade mark licence does not need to be registered for the licensee to bring proceedings against a third party for trade mark infringement. The court held that Article 23(1) is in place to protect, for example, a party acquiring a trade mark where they were unaware it was subject to an unregistered licence. A future acquirer of a trade mark in this situation would take it free from any previous licence if the licence is not registered and the acquirer does not have actual knowledge of the licence. Accordingly, the plain reading of 23(1) EU TM Regulation applies where parties have rights in a trade mark as an object of property including in situation such as those covered by Art 17 (right to transfer), 19 (right in rem) and 22 (right to licence) of the EU TM Regulation but the plain reading should not apply in situations such as the main proceedings where a third party has infringed the trade mark.

Link to Judgment

Judgment Date: 04 FEBRUARY 2016