The European Court of Justice has ruled that an agency which registered a .eu domain name on behalf of a trade mark owner did not have the right to do so because the contract between them did not constitute a trade mark licence. The matter came before the Court in respect of a period where only trade mark owners or licence holders could register .eu domain names.
American optician Welsh Optical held rights in the “lensworld” trade mark in Belgium, the Netherlands and Luxembourg and entered into a contract with Bureau Gevers SA to register the lensworld.eu web address. Belgian company Pie Optiek SPRL also held rights in the “lensworld” mark in Belgium, the Netherlands and Luxembourg, albeit in different classes of goods and services. It objected to the registration by Bureau Gevers on behalf of Welsh Optical.
The European Court of Justice found in favour of Pie Optiek and ruled that the contract between Welsh Optical and Bureau Gevers could not be regarded as a trade mark licence. It was instead merely a contract between the parties to allow for Bureau Gevers to register the web address for lensworld. The Regulation which allowed for registration by trade mark owners or licensees could not be construed by the court in a manner which would allow for the contract to constitute a trade mark licence.
By Aasim Durrani. Aasim is a Trainee Solicitor and can be contacted on firstname.lastname@example.org .
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