The consent to the use of the trademark is always revocable

The holder of a trademark has the right to impede others to use its own brand also after many years that the use thereof had been authorized.

In a case recently afforded by the Court of Justice of the European Union (C-661/11 of 19.09.2013) the holder of a trademark had approved for many years that another entrepreneur used its trademark for the production of bags, undertaking at the same time not to use it for the same purpose.

This peaceful coexistence at one point entered into crisis and the holder of the trademark decided to impede the third party said use and to start to produce bags directly.

The third party felt damaged both because it should put an end to a business that it has developed in the course of the years, and because the holder of the trademark, by producing bags, would profit from all the advertising and the start-up promoted by the third party in the past years.

The Court of Justice has instead agreed with the holder of the trademark. In particular, the Court has affirmed that “the holder of a trademark cannot give an irrevocable consent to the use of its trademark” and that once its consent has been revoked it shall act also against those parties that in the past had obtained it. It is of no relevance that this consent had been given in the past and for a long time, since it is always the trademark holder’s right to revoke or put an end to the authorized use of its mark.

The revocation shall not be immediate but previous notice shall be necessary. Above all, it will always be appropriate to consider such an event in the contractual relationships to establish a very long term of notice and adequate sanctions in case of violation.