HIGH COURT (CHANCERY DIVISION), JUDGMENT OF 27 MAY 2011, JEAN CHRISTIAN PERFUMES LTD AND JIGSAW EUROPEAN SALES LTD V. SANJAY THAKRAR T/A BRAND DISTRIBUTORS LTD, [2011] EWHC 1838 (CH)

The High Court ruled that an oral licensee of a Community trademark can bring an action for infringement. The oral use of a Community trademark could amount to a trademark infringement.

Jean Christian Perfumes Ltd, the owner, and Jigsaw European Sales Ltd (Jigsaw), the licensee of the Community trademark "STUNNING", brought an action before the High Court for trademark infringement by the unauthorized importation of STUNNING branded goods into the UK. The goods were manufactured in India by the authorized manufacturers but they were not in the authorized packaging and their importation into and sale in the UK happened without the consent of the plaintiffs.

Click here to see Jean Christian Perfumes' Community trademark.

The first issue was whether Jigsaw could sue for infringement of the Community trademark "STUNNING" despite being a mere oral licensee.

Under section 28(2) of the UK Trade Marks Act 1994, a license under a UK trademark is not effective unless it is in writing and signed by or on behalf of the grantor. Accordingly, an oral licensee of a UK trademark would have no locus to sue for infringement; he would not have an effective license at all.  

John Baldwin QC clarified that this did not apply in the case of a Community trademark. While Article 17(2) of the Community Trademark Regulation (CTMR) provides that assignments of Community trademarks needs to be in writing, there are no formalities with respect to licenses. Article 22(3) CTMR provides that a licensee might bring proceedings for infringement if he has the consent of the trademark owner. The judge concluded that an oral licensee of a Community trademark could also bring infringement proceedings, provided he had the necessary consent of the trademark owner.  

On the question of trademark infringement, the judge held that the oral use of a Community trademark could amount to an infringing use. Since it was possible to register sounds as Community trademarks if they were capable of being represented graphically, it would be “peculiar” if a Community trademark could not be infringed by oral use. Furthermore, looking at the examples of infringing acts in Article 9(2) of the CTMR, there was nothing to suggest that oral use was excluded.

Although the case was decided by the English Court, it will also have implications for other cases dealing with the infringement of a Community trademark in Europe.