B9 10108. Gerecht EU, 9 september 2011, T-83/09, Chalk tegen OHIM / Reformed Spirits Company Holdings (CRAIC).
Merkenrecht. Weigering inschrijving van de overgang naar een andere partij van het woordmerk „CRAIC”. De vermeende eigenaar van het Gemeenschapsmerk heeft de overdracht van het Gemeenschapsmerk niet geregistreerd waardoor deze geen werking heeft jegens derden ingevolge art. 23 Gemeenschapsmerkenverordening 40/94 (thans 207/2009).
Article 16 of Regulation No 40/94
25. The applicant argues that Article 16(1) of Regulation No 40/94 requires OHIM to consider and apply the laws of the Member States – in the present case, the law of the United Kingdom – when making any decision concerning the transfer of a Community trade mark. In that regard, the Court notes that Article 16(1) of Regulation No 40/94 states that a Community trade mark as an object of property is to be dealt with as a national trade mark registered in a Member State. It follows that it is the national law of the Member State concerned which applies to questions regarding ownership of a Community trade mark. Accordingly, the competent authority to deal with questions relating to the ownership of Community trade marks is the competent authority for national marks of the Member State in question.
26. However, Article 16 of Regulation No 40/94 does not govern the law applicable to a contract, which includes the rules on the validity and interpretation of contracts concerning a Community trade mark, such as, in particular, assignments. In those cases the rights and obligations concerned are inter partes, namely between the parties to a contract.
27. The Board of Appeal was therefore right to find, contrary to the applicant’s arguments, that Article 16 of Regulation No 40/94 does not in any way require that OHIM consider and apply the national laws of the Member States concerning a Community trade mark as an object of property. It is not apparent from Article 16 of Regulation No 40/94 that OHIM or the Courts of the European Union must consider or rule on contractual or legal questions arising under national law.
Article 23 of Regulation No 40/94
36. Under Article 23 of Regulation No 40/94, a transfer of a Community trade mark is in principle to have effects vis-a-vis third parties only after entry in the register, save where third parties have acquired rights in the trade mark after the date of the transfer and they knew of that transfer at the date on which the rights were acquired. It follows that, in order to be able to assert his rights vis-à-vis third parties, the new proprietor after the transfer of the trade mark must register that transfer. In the absence of such registration, third parties having no knowledge of the transfer cannot have that transfer raised against them. In the present case, the applicant, as the alleged proprietor of the Community trade mark following the alleged earlier assignment, did not register the transfer of the Community trade mark in the register at OHIM. Moreover, there is no indication or claim that the intervener knew of the earlier assignment of the mark at issue to the applicant. In such a situation, the transfer of the Community trade mark to the applicant may not be raised against the intervener.
37. It follows that the Board of Appeal was justified in holding that OHIM had lawfully registered the transfer of the mark at issue to the intervener on the basis of the evidence which was submitted to it.
Lees het arrest hier.
