Transfer of registered trade marks
1. A trade mark may be transferred, separately from any transfer of the undertaking, in respect of some or all of the goods or services for which it is registered.
2. A transfer of the whole of the undertaking shall include the transfer of the trade mark except where there is agreement to the contrary or circumstances clearly dictate otherwise. This provision shall apply to the contractual obligation to transfer the undertaking.
3. Member States shall have procedures in place to allow for the recordal of transfers in their registers.
Rights in rem
1. A trade mark may, independently of the undertaking, be given as security or be the subject of rights in rem .
2. Member States shall have procedures in place to allow for the recordal of rights in rem in their registers.
Levy of execution
1. A trade mark may be levied in execution.
2. Member States shall have procedures in place to allow for the recordal of levy of execution in their registers.
Licensing
1. A trade mark may be licensed for some or all of the goods or services for which it is registered and for the whole or part of the Member State concerned. A licence may be exclusive or non-exclusive.
2. The proprietor of a trade mark may invoke the rights conferred by that trade mark against a licensee who contravenes any provision in his licensing contract with regard to:
(a)
its duration;
(b)
the form covered by the registration in which the trade mark may be used;
(c)
the scope of the goods or services for which the licence is granted;
(d)
the territory in which the trade mark may be affixed; or
(e)
the quality of the goods manufactured or of the services provided by the licensee.
3. Without prejudice to the provisions of the licensing contract, the licensee may bring proceedings for infringement of a trade mark only if its proprietor consents thereto. However, the holder of an exclusive licence may bring such proceedings if the proprietor of the trade mark, after formal notice, does not himself bring infringement proceedings within an appropriate period.
4. A licensee shall, for the purpose of obtaining compensation for damage suffered by him, be entitled to intervene in infringement proceedings brought by the proprietor of the trade mark.
5. Member States shall have procedures in place to allow for the recordal of licences in their registers.
Applications for a trade mark as an object of property
Articles 22 to 25 shall apply to applications for trade marks.
Source: EUR-Lex (Publications Office of the EU), © European Union, reuse permitted under Commission Decision 2011/833/EU.
