Journal Article

Licences in OHIM practice

Verena von Bomhard, Hugh O'Neill and Anat Paz

in Journal of Intellectual Property Law & Practice

Volume 2, issue 11, pages 756-769
Published in print November 2007 | ISSN: 1747-1532
Published online September 2007 | e-ISSN: 1747-1540 | DOI: http://dx.doi.org/10.1093/jiplp/jpm168
Licences in OHIM practice

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Legal context

Despite the commercial importance of licences, the Regulation 40/94 contains relatively few provisions on licences. As far as these refer to licences granted to CTMs or their recordal at OHIM, they are beyond the scope of the article, which deals with the case law emanating from OHIM in inter partes proceedings, where licences have played a role.

Key points

This article considers the legal requirements licensees must meet when filing opposition and cancellation proceedings before OHIM. It reviews when use under licence is regarded as genuine use, or valid for the purpose of establishing acquired distinctiveness or reputation. It also deals with OHIM decisions regarding licensees filing the licensors' trade marks in their own names.

Practical significance

With respect to the standing of licensees as opponents or applicants for invalidity, this article explains the procedural requirements, mentioning also points to be considered when drafting trade mark licences. The article also explains to what extent a licence need be proven where the opponent or cancellation applicant has not used the earlier mark himself but wishes to rely on use made by someone else. On the issue of a licensee filing the licensed mark in his own name, the article gives an introduction to the criteria applied by OHIM and deals with his fiduciary position, resulting in a greater likelihood of his having acted in bad faith.

Keywords: It is quite remarkable that, although the trade mark licence is so important a legal means of creating and exploiting the goodwill in a trade mark, so little in the way of case law and office decisions has become available to us.; Perhaps because of this paucity of legal doctrine, the significance of the trade mark licence within the practice of the Office of Harmonization in the Internal Market (OHIM) has been insufficiently appreciated or understood, particularly as it affects issues involving genuine use and bad faith.; In this article, the authors conduct a close examination of the case law of OHIM and the Court of First Instance and frame it within the context of the position that the prudent licensor or licensee should take when conducting its business and in its record-keeping.

Journal Article.  10886 words. 

Subjects: Arbitration ; Intellectual Property Law

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