The matter at hand

This preliminary ruling concerns the interpretation of the first sentence of Article 23(1) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, according to which the entry of a license, transfer or security right in the Register is required in order for the license, transfer or security right to have effect vis-à-vis third parties.

In proceedings involving an infringement action brought by the holder of a licence which had not been entered in the Register, the referring German court asked, in essence, whether Article 23(1) precludes the holder of such unregistered license from bringing proceedings alleging infringement of a EU trade mark.

The judgment of the ECJ

With reference to its judgments in Brain Products (C‑219/11) and Lanigan (C‑237/15 PPU), the ECJ rules that it is necessary to consider not only the wording of the relevant provision “but also the context in which it occurs and the objectives pursued by the rules of which it is part” (paragraph 19).

Regarding the context of the provision, the ECJ observes that a literal and schematic interpretation thereof “gives support to the idea that it, as a whole, is intended to govern the enforceability of the legal acts referred to in Articles 17, 19 and 22 of the Regulation in respect of third parties who have, or are likely to have, rights in the [EU] trade mark” (paragraph 20).

Considering further that the provision is included under the section entitled ‘EU trade marks as objects of property’ (paragraph 21) and that Article 22(3) of the Regulation provides that “the licensee’s right to bring proceedings for infringement of a EU trade mark (…) is subject only to the proprietor’s consent thereto” (paragraph 22), the ECJ takes the view that Article 23(1) intends to “protect a person who has, or may have, rights in a [EU] trade mark as an object of property”, but does not protect third parties infringing the rights conferred by the EU trade mark (paragraph 25).

On this basis, the ECJ concludes that “the first sentence of Article 23(1) of [Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark] must be interpreted as meaning that the licensee may bring proceedings alleging infringement of a [EU] trade mark which is the subject of the license, although that license has not been entered in the Register” (paragraph 26).