EU trade mark licence - art. 25 EUTM Regulation
Comments by: Paweł Wrześniewski
REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 14 June 2017 on the European Union trade mark
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Art. 25
LICENSING
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1. An EU trade mark may be licensed for some or all of the goods or services for which it is registered and for the whole or part of the Union. A licence may be exclusive or non-exclusive.
2. The proprietor of an EU trade mark may invoke the rights conferred by that trade mark against a licensee who contravenes any provision in his licensing contract with regard to:
(a) its duration;
(b) the form covered by the registration in which the trade mark may be used;
(c) the scope of the goods or services for which the licence is granted;
(d) the territory in which the trade mark may be affixed; or
(e) the quality of the goods manufactured or of the services provided by the licensee.
3. Without prejudice to the provisions of the licensing contract, the licensee may bring proceedings for infringement of an EU trade mark only if its proprietor consents thereto. However, the holder of an exclusive licence may bring such proceedings if the proprietor of the trade mark, after formal notice, does not himself bring infringement proceedings within an appropriate period.
4. A licensee shall, for the purpose of obtaining compensation for damage suffered by him, be entitled to intervene in infringement proceedings brought by the proprietor of the EU trade mark.
5. On request of one of the parties the grant or transfer of a licence in respect of an EU trade mark shall be entered in the Register and published.
6. An entry in the Register effected pursuant to paragraph 5 shall be cancelled or modified at the request of one of the parties.
'The rights conferred by that trade mark' mentioned in art. 25(2) eutm are described mainly in art. 9 eutm according to which the proprietor of that EU trade mark shall be inter alia entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered or the sign is identical with, or similar to, the EU trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trade mark is registered, if there exists a likelihood of confusion on the part of the public.
'One of the parties' (art. 25[5] and 25[6] eutm) is of course a licensor or a licensee.
The request to enter the grant or transfer of your licence to the Register will cost you. Official fee paid to European Union Intellectual Property Office for the application for the registration of grant or transfer of a licence is 200 EUR (per registration, but where multiple requests are submitted in the same application or at the same time, the fee shall not exceed a total of 1000 EUR). The same fee is to be paid for the cancellation of the registration of a licence. Modification of an entry on the other hand is not subject to a fee.
If EU trade mark has been transferred, the successor in title may not invoke the rights arising from the registration until the transfer is entered in the Register. See art. 20 eutm.
[last update: 7th of April 2020]