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).]
No comments:
Post a Comment