Is it possible to terminate a trademark license only at the request of one of the co-owners of the trademark?

January 13, 2023


Author: Boyana Boyadzhieva

C‑686/21 VW, Legea Srl vs SW, CQ, ET, VW, Legea Srl., deals with the question of whether the consent of all co-owners or only some of them was required in the case of licensing of a trade mark, and whether the lack of consent by one of them could terminate a license that has already been granted.

According to the opinion of the Advocate General of the European Court of Justice, due to the lack of harmonization at the European level, national law and practice govern the specific features of agreements to revoke or withdraw a license to use a co-owned trademark, regardless of whether it concerns national or European trade mark.

The Advocate General concluded that Article 5 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trademarks and Article 9(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, together with, where relevant, the corresponding provisions of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks and of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark

are to be interpreted as meaning that in the case of joint proprietorship of a trademark, the formation of common consent on the part of the joint proprietors to grant a third party a license to use a national or a European Union trademark, or to terminate that license, is governed by the applicable provisions of the Member State.

Under Bulgarian law, in particular Article 22 of the Trade Marks and Geographical Indications Act, permission to use a jointly owned trademark is granted with the written consent of all joint owners, unless otherwise agreed between them.

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