With the judgment of 13 July, 2017 (Case T-389/16) the Court has decided the type of consent that the owner of a prior trademark has to give to the registration of a same or similar subsequent trademark.
The case submitted to the UE Court concerned the litigation between AIA and Casa Montorsi S.r.l. which asked the invalidity of the verbal European trademark “MONTORSI F. & F.” because of the existence of the prior verbal Italian trademark “Casa Montorsi” filed in 1995, registered in 1998 and then renewed.
In the default of the invalidity proceeding, AIA asked for the rejection of the application for declaration of invalidity for the European trademark since there was an agreement between the parties establishing that the distinctive signs used until then could coexist and that the parties would mutually renounce to the appeal the registration of the signs.
Art. 53, paragraph 3, EUTMR, states that
“An EU trademark may not be declared invalid where the proprietor of a right referred to in paragraphs 1 or 2 consents expressly to the registration of that trademark before submission of the application for invalidity”.
The Court deemed that that consent cannot be generic, consequently the agreement between the parties did not permit to demonstrate the expressed consent stated in art. 53, paragraph 3, EUTMR.
The Court stated that the law, having exceptional character, needs a restrictive interpretation. The expression “consents expressly to the registration of that trademark” should be read meaning that, in order to be equivalent to a consent for the registration, the agreement at hand should refer to the trademark “in a clear, evident and explicit manner”.
AIA instead appeals to an agreement that the judgment considers “unclear and imprecise” since it did not mention the trademark MONTORSI F. & F. and some important elements, such as territory and time of application, were not defined.
Since in the agreement there was not an expressed consent, the AIA appeal was rejected.