Exclusive Trademark License: Analysis of Judgment No. 10637 of 2024
Judgment No. 10637 of April 19, 2024, issued by the Court of Cassation, represents an important ruling on industrial property rights, particularly concerning trademark license agreements. The Court established that, in cases of co-ownership of a trademark, the unanimous consent of all co-owners is required to grant an exclusive license of use to third parties. This principle is based on considerations of equity and the protection of the rights of all co-owners involved.
Trademark Co-ownership and Licenses of Use
The central issue addressed by the Court concerns the joint ownership of a trademark among multiple parties. When a trademark is co-owned by several parties, each of them has the right to use the trademark. The granting of an exclusive license of use to third parties therefore deprives the other co-owners of the direct enjoyment of the trademark, and this is a fundamental reason why unanimous consent is required.
- Protection of the rights of all co-owners.
- Prevention of conflicts among co-owners.
- Clarity in commercial relationships.
Legal and Jurisprudential References
The Court's decision is based on several provisions of the Civil Code, particularly Articles 1102, 1103, 1105, and 1108, which govern co-ownership and the rights of co-owners. Article 1108, in particular, establishes that each co-owner may dispose of the common property only with the consent of the others. The judgment therefore reiterates the importance of this principle even in the context of trademark licensing.
(TRADEMARK EXCLUSIVITY) - IN GENERAL Trademark Co-ownership - Agreement for the grant of an exclusive license of use to third parties - Necessity of unanimous consent of co-owners - Existence - Reasons Regarding industrial property rights, in cases of trademark co-ownership, the agreement for the grant of an exclusive license of use of the distinctive sign to third parties requires, for its completion, the unanimous consent of the co-owners, because the grant of exclusivity to the licensee deprives the co-owners of the direct enjoyment of the object of co-ownership, with the provisions of Article 1108, paragraphs 1 and 3, of the Civil Code having a contrary relevance.
Conclusions
Judgment No. 10637 of 2024 offers important food for thought for professionals and entrepreneurs operating in the trademark field. It underscores the need for careful management of licenses of use, especially in cases of co-ownership. It is therefore essential that trademark co-owners establish clear understandings and agreements to avoid future disputes and ensure the proper valorization of the trademark itself. The protection of each co-owner's rights must always come first, for a fruitful and conflict-free collaboration.
