Case C-661/11: Judgment of the Court (Third Chamber) of 19 September 2013 (request for a preliminary ruling from the Cour de cassation — Belgium) — Martin y Paz Diffusion SA v David Depuydt, Fabriek van Maroquinerie Gauquie NV (Trade marks — Directive 89/104/EEC — Article 5 — Consent on the part of the proprietor of a trade mark to the use, by a third party, of a sign which is identical with that mark — Consent given in a situation where there is shared use — Possibility for that proprietor to put an end to the shared use and regain the exclusive use of its mark)
Date: 2013-09-19
Institutions: Court of Justice
Subjects: EU trade mark, approximation of laws, interpretation of the law, patents licence, registered trade mark, trade-mark law








C_2013344EN.01001702.xml










23.11.2013   


EN


Official Journal of the European Union


C 344/17





Judgment of the Court (Third Chamber) of 19 September 2013 (request for a preliminary ruling from the Cour de cassation — Belgium) — Martin y Paz Diffusion SA v David Depuydt, Fabriek van Maroquinerie Gauquie NV
(Case C-661/11) (1)

(Trade marks - Directive 89/104/EEC - Article 5 - Consent on the part of the proprietor of a trade mark to the use, by a third party, of a sign which is identical with that mark - Consent given in a situation where there is shared use - Possibility for that proprietor to put an end to the shared use and regain the exclusive use of its mark)
2013/C 344/28
Language of the case: French

Referring court

Cour de cassation

Parties to the main proceedings


Applicant: Martin y Paz Diffusion SA

Defendants: David Depuydt, Fabriek van Maroquinerie Gauquie NV

Re:

Request for a preliminary ruling — Cour de cassation — Interpretation of Article 5(1) and Article 8(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) — Proprietor’s rights over a registered mark where there is an extended period of sharing the use of the mark with a third party in a form of co-ownership for part of the goods covered and irrevocable consent given by the proprietor to that third party to use of that mark — National rule prohibiting the proprietor of the mark from making wrongful or abusive use of its right — Prohibition of use of the mark by the proprietor to the detriment of the third party — Penalty

Operative part of the judgment

Article 5 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, as amended by the Agreement on the European Economic Area of 2 May 1992, precludes a proprietor of trade marks which, in a situation where there has been use shared with a third party, had consented to the use by that third party of signs which are identical to its marks in respect of certain goods in classes for which those marks are registered and which no longer consents to that use, from being deprived of any possibility of asserting the exclusive right conferred upon it by those marks against that third party and of itself exercising that exclusive right in respect of goods which are identical to those of that third party.


(1)  OJ C 89, 24.3.2012.