ECJ: Licensees not entered in the European Union trademark register have legal standing

On 4 February 2016, the European Court of Justice (ECJ) held that a licensee not listed in the European Union trademark register can assert claims for infringement of a European Union trademark (file no. C-163/15). We reported on the ECJ’s preliminary ruling and the case it was based on here.

In the case, the plaintiff held a licence for the EU trademark “ARKTIS” for blankets. Under the licensing agreement the plaintiff was obliged to enforce claims in its own name for infringement of the licensor’s trademark rights. The defendant was infringing the trademark rights in the sign “ARKTIS”. But what was unclear was whether the plaintiff, as a non-registered licensee, was able to assert claims for infringement of the European Union trademark at all.

The ECJ has now ruled that the capacity to sue depends only on the consent of the trademark owner. Article 23(1) European Union Trademark Regulation, which requires a licence to be entered in the register, serves merely to legally protect trademark assets. In contrast, entry of the licence in the trademark register is irrelevant to the capacity to sue third parties for infringement.

In its decision, the ECJ confirmed the views held by Düsseldorf Higher Regional Court and the German Association for the Protection of Intellectual Property (GRUR). The ECJ’s ruling is welcome as it dispenses with the formality of entering every licensee with legal standing in the EU trademark register.