Higher Regional Court of Düsseldorf: request to the CJEU for preliminary ruling about the standing to sue of a licensee who is not entered in the Community Trademark Register

With its decision of 31.03.2015 (I-20 U 259/13) the Higher Regional Court of Düsseldorf (OLG) posed the question to the CJEU if a licensee who is not entered in the Community Trademark Register (Register) can claim rights regarding the infringement of a Community Trademark (CTM).

In the underlying case the plaintiff (K) is the licensee of the CTM “ARKTIS” registered among others for blankets. Pursuant to its license agreement, K is obliged to claim in its own name the licensor’s trademark rights in case of infringement. The defendant Mr. Hassan – CEO of the company OVL Onlinevertrieb & -logistik GmbH & Co. KG – infringed the aforementioned rights. However, the question is if K can claim those rights although he is not entered in the Register.

Art. 22 CTMR foresees the general possibility of a licensee to claim trademark rights against third parties. However, according to Art. 23 CTMR, the actions mentioned in Art. 22 CTMR can only be exercised against third parties in the member states if the licensee is entered in the Register. The OLG is of the opinion that Art. 23 CTMR merely deals with the issue of a trademark acquisition in good faith but does not touch the question of standing to sue as such. It appears that the CTM Court in Alicante disagrees, arguing that Art. 23 CTMR had to be interpreted to mean that a licensee can only claim the relevant rights if he is entered in the Register. If the CJEU follows this opinion, an additional question needs to be answered, namely whether or not a licensee not entered into the Register can claim those rights via derivative rights of action. This is common practice in Germany.

But it is not only the OLG that disagrees with the CTM Court in Alicante. The “Deutsche Vereinigung für Gewerblichen Rechtsschutz und Urheberrecht e.V. (GRUR)“ took the view that the licensee’s standing to sue can only depend on the trademark owner’s consent but not on its entry in the Register.