The Misconstrued Notion of Consent in EU Trade Mark Law
A registered trade mark grants its owner an exclusive intellectual property right to exploit a particular sign in relation to certain goods and/or services. The proprietor is free to authorise further parties to use his/her trade mark in various ways. This often takes place by way of licensing agreements, assignments and transfers. As this is said to be a core principle of the EU trade mark framework, it is crucial to determine precisely the facts and circumstances giving rise to the owner’s consent allowing another undertaking to make use of their trade mark.
Consent appears in EU trade mark law in various contexts. This article analyses it in two particular circumstances – firstly, in the context of the doctrine of exhaustion of trade mark rights, and secondly, within the requirement to prove genuine use of a trade mark. Having studied the jurisprudence in both instances, it quickly unfolds that the notion of consent has been directly imported from the exhaustion doctrine into the proof of use cases without any sound and independent reasoning. The strict standard in the exhaustion of rights doctrine is justified since proving the trade mark proprietor’s consent in these cases extinguishes his/her exclusive trade mark rights. In contrast, establishing consent within the proof of use requirement bears the contrary function – safeguarding the trade mark proprietor’s right.
The article examines the different rationale underpinning both instances, as well as the global market impact, which naturally prompt a more relaxed standard as far as consent in proof of use cases is concerned.
[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP).]