Opinion of the Advocate General — ECLI:EU:C:2022:977
Date: 2022-12-08
Language of the case: Italian
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Reference for a preliminary ruling
Origin: Italy

Summary C-686/21 – 1 
Case C-686/21 
Summary of the request for a preliminary ruling pursuant to Article 98(1) of 
the Rules of Procedure of the Court of Justice 
  
Date lodged:  
15 November 2021 
Referring court:  
Corte suprema di cassazione (Italy) 
Date of the decision to refer:  
29 October 2021 
Appellants:  
VW 
Legea S.r.l. 
Respondents:  
SW 
CQ 
ET 
VW 
Legea S.r.l. 
  
Subject matter of the main proceedings 
Appeal before the Corte di Cassazione (Supreme Court of Cassation) against the 
judgment by which the Corte d’appello di Napoli (Court of Appeal, Naples) ruled 
lawful the use of a trade mark by the company to which the exclusive right to use 
that mark had been assigned, free of charge and for an indefinite period, by 
unanimous consent of the joint proprietors of the mark, even after one of those 
joint proprietors had expressed his dissent to the continuation of that assignment. 
EN 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING ‒ CASE C-686/21 
 
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Subject matter and legal basis of the request for a preliminary ruling 
The reference for a preliminary ruling concerns the interpretation of EU law in 
connection with the issue of whether, in the case of joint proprietorship of a trade 
mark, the grant to a third party of the exclusive right to use the mark requires the 
unanimous consent of the joint proprietors and whether, after the right to use the 
mark has been assigned by unanimous agreement, one of the joint proprietors may 
subsequently withdraw from that assignment unilaterally. 
Article 267 TFEU 
Questions referred for a preliminary ruling 
‘1. Are the EU rules in question, in so far as they provide for the exclusive 
rights of the proprietor of an EU trade mark and, at the same time, for the 
possibility of such a mark being owned by several individuals in shares, to be 
interpreted as meaning that the assignment to a third party of the exclusive right to 
use a shared trade mark, free of charge and for an indefinite period, can be 
decided upon by a majority of the joint proprietors, or as meaning that it requires 
their unanimous consent instead? 
2. If it is the latter, in the case where an EU trade mark or a national trade mark 
is owned by several individuals, would it be consistent with the principles of EU 
law for it to be impossible for one of the joint proprietors of the mark, after the 
mark has been assigned to a third party by unanimous decision, free of charge and 
for an indefinite period, unilaterally to withdraw from that decision or, 
alternatively, would it, on the contrary, be consistent with the principles of EU law 
if the joint proprietor were not bound in perpetuity by the original intent, such that 
he or she could retract, with the resulting effect on the act of assignment? 
Provisions of EU law relied on 
Directive (EU) 2015/2436 of the European Parliament and of the Council of 
16 December 2015 to approximate the laws of the Member States relating to trade 
marks, in particular, Article 10 
Regulation (EU) 2017/1001 of the European Parliament and of the Council of 
14 June 2017 on the European Union trade mark, in particular, Article 9 
Provisions of national law relied on 
Regio Decreto 16 marzo 1942, n. 262 – Approvazione del testo del Codice civile 
(Royal Decree No 262 of 16 March 1942 – Approving the Civil Code), in 
LEGEA 
 
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particular, Articles 1102, 1103, 1105 and 1108 (on co-ownership) and 
Articles 1372 and 1373 (on efficacy of contract and withdrawal) 
Article 1108 of the Civil Code, entitled ‘Innovation and other actions beyond the 
scope of ordinary administration’, provides, in the first to third paragraphs thereof: 
‘By majority resolution of the participants representing at least two-thirds of the 
total value of the common property, the co-owners may decide upon any 
innovation to improve the property or to render its enjoyment easier or more 
profitable, provided that it does not impair the enjoyment of any participant and 
does not entail heavy expenditure. 
Other actions beyond the scope of ordinary administration may be decided upon 
similarly, provided that they do not harm the interest of any participant. 
The consent of all participants is required for the alienation of, or the creation of 
rights in rem over the common property or for the lease thereof for a period 
exceeding nine years.’ 
Decreto Legislativo 10 febbraio 2005, n. 30 – Codice della proprietà industriale, a 
norma dell’articolo 15 della legge 12 dicembre 2002, n. 273 (Legislative Decree 
No 30 of 10 February 2005 – the Industrial Property Code, enacted pursuant to 
Article 12 of Law No 273 of 12 December 2002), in particular, Articles 6, 15, 20 
and 23 
Article 6, entitled ‘Joint ownership’ provides, in paragraph 1 thereof: 
‘Where an industrial property right belongs to several persons, the relevant rights 
shall be governed, except as otherwise established by conventions with rules to 
the contrary, by the provisions of the Civil Code relating to joint ownership, to the 
extent they are compatible.’ 
In accordance with Article 15, exclusive rights are associated with the trade mark. 
Article 20(1) provides, in particular, that ‘the rights of the proprietor of the 
registered trade mark consist in the authority to make exclusive use of the trade 
mark’, with the consequent right of the proprietor to prevent third parties from 
using it in the course of trade ‘without his or her consent’. 
Article 23 provides that the proprietor may transfer the trade mark ‘in respect of 
all or part of the goods or services for which it was registered’ and also permits 
trade marks to be licensed, including on a non-exclusive basis. 
Succinct presentation of the facts and procedure in the main proceedings 
1 In 1993 VW, SW, CQ and ET, in their capacity as joint proprietors of the national 
and Community trade mark ‘Legea’, each of them as to one quarter, granted the 
exclusive right to use that mark to the company Legea S.r.l., free of charge and for 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING ‒ CASE C-686/21 
 
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an indefinite period. The grant of the right to use the trade mark ‘Legea’ was made 
with the unanimous consent of all the joint proprietors. 
2 In December 2006, the proprietor VW expressed his dissent to the continuation of 
the assignment of the right to use the trade mark. Notwithstanding that dissent, 
Legea S.r.l. continued to use the mark, even after 31 December 2006. 
3 In the context of an action brought by Legea S.r.l. against VW before the 
Tribunale di Napoli (District Court, Naples), the issue was raised of the lawfulness 
of the company’s use of the trade mark. The District Court held that Legea S.r.l.’s 
use of the mark had been lawful up to 31 December 2006, since it had taken place 
with the unanimous content of all the joint proprietors, but unlawful after 
31 December 2006, in view of the dissent expressed by the proprietor VW. 
4 An appeal was brought against the judgment of the District Court before the Court 
of Appeal, Naples. By judgment of 18 June 2016, the appellate court set aside the 
judgment at first instance and ruled Legea S.r.l.’s use of the trade mark ‘Legea’ 
lawful, even after 31 December 2006. That was on the basis that, even after that 
date, the consent of the majority of the joint proprietors remained. In other words, 
according to the Court of Appeal, even after 31 December 2006 the joint 
proprietors had legitimately decided, by a majority (three quarters of the joint 
proprietors), to consent to Legea S.r.l.’s continued use of the mark. In the case of 
joint proprietorship of a trade mark, therefore, there is no need for a unanimous 
decision of the joint proprietors in order to assign the exclusive use of the trade 
mark to a third party. 
5 VW has brought an appeal in cassation against the judgment of the Court of 
Appeal. 
The essential arguments of the parties in the main proceedings 
6 VW considers that the judgment of the appellate court infringed certain provisions 
of the Civil Code or applied them incorrectly, in particular, the provisions 
concerning co-ownership and withdrawal. 
7 According to VW, the judgment of the [appellate court] wrongly characterised as 
an act of ordinary administration the grant of the exclusive right to use, free of 
charge and for an indefinite period, a trade mark registered to several joint 
proprietors. That resulted, in particular, in the incorrect application of Article 1108 
of the Civil Code, which provides that, where property is owned jointly by several 
individuals, any acts going beyond the scope of ordinary administration must be 
adopted by a qualified majority or unanimously, depending on the case. 
8 In addition, the appellate court had erred in not finding VW’s unilateral 
withdrawal from the agreement for the indefinite assignment of the trade mark to 
be valid. 
LEGEA 
 
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9 Legea S.r.l. and the other joint proprietors of the trade mark, SW, CQ and ET, 
take the opposite view: a decision relating to a trade mark held in co-ownership 
that has been adopted unanimously cannot be changed by the majority or, still 
less, by a single joint proprietor, since unanimous consent is required. 
Consequently, in the case of an agreement for the assignment of the right to use a 
trade mark for an indefinite period, entered into with the unanimous consent of all 
the joint proprietors, any unilateral withdrawal on the part of an individual 
proprietor is of no effect. 
Succinct presentation of the grounds for the reference for a preliminary 
ruling 
10 In the view of the Court of Cassation, the rules of the Civil Code governing co-
ownership, which apply equally in the case of joint proprietorship of a trade mark, 
along with the rules governing withdrawal from a contract, must be interpreted in 
the light of EU trade mark legislation. In this particular case, in fact, some of the 
trade marks at issue are EU trade marks and therefore the successive sources of 
EU law are an essential aid to interpretation. 
11 The referring court notes that EU trade mark legislation adheres to the principle 
that registration of a trade mark confers exclusive rights on the proprietor 
(Article 10 of Directive 2015/2436 and Article 9 of Regulation 2017/1001), 
provides that trade marks may be the subject of an exclusive or non-exclusive 
licence, and acknowledges the possibility of joint proprietorship of a mark. There 
are, on the other hand, no rules of EU law governing the manner in which rights of 
co-ownership may be exercised, which is why the interpretative guidance of the 
Court of Justice is needed. 
12 In this legal framework, according to the Court of Cassation, it is necessary to 
clarify, first, whether the national legislation mentioned should be interpreted as 
meaning that the assignment to a third party of the right to use a trade mark is 
comparable to other types of contract, such as a lease agreement. Indeed, where 
the ownership of property is shared among several individuals, a lease of longer 
than nine years will require the consent of all the joint proprietors, pursuant to the 
third paragraph of Article 1108 of the Civil Code. 
13 In the referring court’s view, an agreement assigning the exclusive right to use a 
trade mark establishes a personal right of enjoyment similar in structure to the 
right of a tenant under a lease agreement. However, that view – which, according 
to the referring court, was implicitly accepted in the contested judgment of the 
Court of Appeal – might be held to be incompatible with the specific 
characteristics of the EU trade mark (intangibility, distinctive character, conferral 
of exclusive rights on each joint proprietor). The grant of a licence in respect of a 
trade mark, as in the present case, is always potentially detrimental to the rights of 
individual joint proprietors. Consequently, according to the Court of Cassation, 
such an agreement should be treated in the same way regardless of its duration 
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(shorter than or longer than nine years) and the manner (free of charge or 
otherwise) in which the right to use the mark is assigned to the third party. 
14 Secondly, in the referring court’s view, it is necessary to clarify whether, in the 
situation where an agreement assigning the exclusive right to use a trade mark, 
free of charge and for an indefinite period, has been entered into with the 
unanimous consent of the joint proprietors of the mark, one of the joint proprietors 
may subsequently express his dissent to the continuation of that assignment.