CJEU rules out that EU trade mark law governs regime applicable to jointly owned trade mark

Does EU law govern joint ownership of IP rights, including the exercise thereof by each and individual joint owner?

This was the key question at the centre of Legea, C-686/21, a referral from the Italian Supreme Court asking specifically about this having regard to the EU trade mark instruments and the exercise of a jointly owned trade mark through licensing.

Yesterday, the Court of Justice of the European Union (CJEU) issued its judgment, substantially agreeing with the AG and thus finding that the regime applicable to the joint ownership of a trade mark falls within the remit of national law:

• Insofar as the EU Trade Mark Directive is concerned, the CJEU noted that the circumstance that that instrument does not refer to the joint ownership of a national trade mark does not (obviously) mean that the directive precludes it. Rather, it means that this is an unharmonized matter which, as a result, falls within the scope of national law.
• Turning to the EU Trade Mark Regulation, this expressly recognizes joint ownership of an EU trade mark but – like the directive – does not contain any provisions governing the conditions for its exercise by each and every joint owner. Hence, this is also a matter for national law to regulate.

Comment

When reading the AG Opinion and commenting on this blog, I considered that the CJEU would likely follow the Opinion's line of reasoning and conclusion. I nevertheless wondered whether the important issue raised by the Italian Supreme Court could be framed differently than what had been done in this referral.

Specifically, I wondered about the suitability of using the lens of the EU Charter of Fundamental Rights and its Article 17(2) concerning protection of property, rather than subject-matter specific IP legislation – whether in the trade mark or other field.

This is because, the CJEU has already held that Article 17 concerns not just the ‘static’ protection of property – that is: the very existence and acknowledgment thereof – but also its exercise.

If one were to use the EU Charter perspective, then it could be argued that EU law does have something to say – at least in the form of guiding principles – regarding the exercise of IP rights, including in the context of joint ownership thereof and contractual matters. If that was the case, then the Charter could offer a suitable legal basis for a more harmonized approach to the exercise of rights (including those jointly owned), well beyond the realm of trade mark law.

I ultimately considered that Legea, because of the way the referred questions were phrased, would not be the right time to consider such a perspective. But could another opportunity present itself in the form of a new referral in the not-too-distant future? Time will tell…

[Originally published on The IPKat on 28 April 2023]