EUTM owners
in the UK only may become susceptible
to non-use challenges post-Brexit, as use
in the UK may no longer constitute use
of a EUTM. EUTM proprietors would
therefore be well advised to conduct a
full portfolio review and identify any
marks that are potentially vulnerable. If
use of these marks can be extended into
the mainland EU, it would be sensible to
do so prior to 2019. Alternatively, filing a
national application in the UK prior to
Brexit would ensure that no rights in the
UK are lost.
such as licensing arrangements, would also
be advisable where EUTMs are involved,
or where the territory is specified as `the
EU'. Unless the agreement expressly deals
with the prospect of countries leaving the
EU, the issue of whether a particular
agreement will still cover the UK post-
Brexit will be open to interpretation.
contract to contradict it, it is likely that
such agreements (where English law is the
governing law of the contract) would be
construed as still including the UK, on the
basis that the parties intended to include
the UK at the time of entering the
contract. However, this cannot be
guaranteed.
Brexit will potentially bring to the trade
mark position in the UK and European
Union, it is a case of `watch this space'.
The position until 2019 (at the earliest)
remains unchanged, and any developments
will be monitored very closely.
otherwise almost complete uncertainty, is
that where there is a particularly
newsworthy event, trade mark applica-
tions will follow. A number of oppor-
tunistic applications have been filed at
both UK and EU level in the wake of the
Brexit vote, and some of the more note-
worthy include: BREXIT THE MUSICAL;
ENGLISH BREXIT TEA; BREXIT BLUE
(for cheese) and BREXIT BREAD. The
UKIPO has not issued a practice notice
on its position in relation to BREXIT
marks, and has already accepted some of
the applications. Whether these marks
will be considered distinctive, in view of
the now ubiquitous nature of the term
Brexit, remains to be seen.
trade mark infringements of subtenants
Union has decided that, similar to online
platforms, the operator of marketplaces
who sublets various sales areas to
market-traders may be forced to put an
end to trade mark infringement
committed by these market-traders and
to take measures to prevent new
infringements.
tenant of the marketplace Prague market
halls and sublets areas to market-traders.
The plaintiff, the brand owners (inter alia
Tommy Hilfiger and Burberry),
discovered that counterfeits of their
goods were sold in the market hall.
Proceedings against the individual
market-traders have proved difficult in
the past, because the person of the
infringer changed very often. For that
reason the brand owners have joined
together for an injunction against Delta
Center to stop renting sales areas to
market-traders who offer counterfeits.
The case came to the Czech Supreme
Court which decided to stay the
proceedings and refer to the Court of
Justice of the European Union for a
preliminary ruling. The legal basis is that
the Intellectual Property Directive allows
trade mark owners to bring an action
against intermediaries whose services are
used by third party to infringe their trade
marks. The trade mark owners took the
view that the tenant of market halls who
sublets sales points to market-traders
falls within the concept of an
"intermediary whose services are being
used by third party to infringe an intel-
lectual property right" within the
meaning of that provision.
Union has already decided that the
operator of an online marketplace is
liable, if counterfeits were sold via an
online marketplace.
Union decided that the tenant of a
market hall, who sublets sales areas to
market-traders selling counterfeits, is an
intermediary pursuant to Art 11
Intellectual Property Directive. It is
irrelevant if the provision concerns an
online marketplace or a physical
marketplace because it is not apparent
from the Directive that it is limited to
the electronic commerce. This means
that the operator of a physical
marketplace can be forced to put an end
to the trade mark infringements by
market-traders and to prevent new
conditions for an injunction are identical
to those which are addressed to
intermediaries in an online marketplace
as set out by the Court in the L´Oréal
decision. As a result, the injunctions have
to be effective and dissuasive, but must
also be equitable and proportionate. They
must not be excessively expensive and
must not create barriers to legitimate
trade. The intermediary cannot be
required to exercise general and
permanent oversight over its customers.
However, the intermediary may be forced
to take measures which contribute to
avoiding new infringements of the same
nature by the same market-trader from
taking place. As a result, the injunction
may be pronounced only if it ensures a
fair balance between the protection of
intellectual property and the absence of
obstacles to legitimate trade.
trade mark owner demand from the
landlord and how far do the obligations
of the landlord extend. For sure, it is the
function of the national courts to find
answers and to specify the duty requiring
action. At least the landlords should
examine the contracts with the tenants
and should ensure that they have clauses
which allow them to terminate the
contract if an IP right infringement is
shown. Referring to overseeing the
tenants, a "notice and take down"
procedure comparable to the online
sales platforms would be effective and
necessary. Control measures can
naturally not be technically-automated
but have to be conducted by the staff of
the landlord. The landlords should be
ready to take prompt action if they
notice the infringement. In addition, the
case may be applicable for any operator
of a trading point, also for example for
shopping centres or other shopping
facilities which were rented to different
tenants. Therefore, the decision is not
only interesting for owners of fashion
brands but also for pharma trade mark
owners, because pharma products, not
just with regard to drugs but also to
other IP protected pharma products, are
sold in shopping centres or similar
establishments.
IP owners and makes it easier for these
owners to protect their rights. They do
not therefore have to act against a large
number of traders but can proceed
solely against the landlord or operator.