In Jean Christian Perfumes Ltd v Thakrar (t/a Brand Distributor or Brand Distributors Ltd) [2011] EWCH 1383 (Ch), John Baldwin QC, sitting as a Deputy Judge in the Chancery Division, ruled that even an oral licensee of a Community trade mark (CTM) can sue for infringement.

BACKGROUND

The Claimants, Jean Christian Perfumes Ltd and Jigsaw European Sales Ltd, were the registered proprietor and licensee of the CTM for STUNNING, registered in relation to perfumes and similar goods. The claim related to the 2008 unauthorised importation and distribution in the United Kingdom of two consignments of goods bearing the mark (the goods).

It was common ground that the goods were manufactured in India by the authorised manufacturers, Aroma de France, but were not in authorised packaging. The Defendant, Mr Thakrar, was an experienced dealer in perfumes and wanted to sell the goods. However, their importation and sale in the United Kingdom was without the consent of the Claimants and was an infringement of the CTM.

The issue in the case was whether Mr Thakrar’s involvement was such as to amount to infringement of the Claimants’ mark. According to Mr Thakrar, all he had done in relation to the first consignment was arrange shipment to a bonded warehouse in Rotterdam. In relation to the second he had “simply acted as a contact” between an importer and Aroma de France, unaware that the goods were destined for the United Kingdom.

There were two disputes as to the relevant law. First, whether or not an oral licensee of a CTM could sue for infringement; and second, whether oral use of a CTM constituted infringement. The judge was referred to no binding authority on either point.

DECISION

Is An Oral Licensee Permitted to Bring Proceedings?

In reaching his decision, the judge observed that even though Article 22(3) of the CTM Regulation provides that assignments of CTMs have to be in writing, there are no formalities with respect to licences. Consequently, Article 22(3) which allows a licensee to bring infringement proceedings if he had the consent of the owner, and Article 22(4), which permits a licensee to intervene to recover damages in infringement proceedings brought by the owner, both suggest that an oral licensee could bring infringement proceedings if he had the consent of the owner.

Does Oral Use Amount to Infringement?

The judge considered that oral use of a trade mark could amount to infringement, noting that the examples of infringing use as outlined in Article 9(2) of the CTM Regulation do not exclude oral use. Since Mr Thakrar had referred to the goods by the CTM in the course of commercial negotiations with traders, the judge found that he had infringed the CTM by oral use.

More generally, the judge also found Mr Thakrar to have played an active role in importing and distributing the goods in the United Kingdom and was therefore liable for infringement by importation.

COMMENT

This judgment provides authority, at least for UK courts, on the locus of an oral licensee in bringing CTM infringement actions, and highlights that in contrast to UK registered trade mark licences, CTM licences do not have to be in writing. As for oral use of a CTM amounting to infringement, brand owners will be pleased to see this principle confirmed and applied by a UK court.