Industrial Property, Trademark, Communion of Trademarks, Exclusive Concession to Third Parties, Civil Cassation, Section I, Interlocutory Ordinance n. 30749 of 10/29/2021
Trademark – Communion of the trademark – Exclusive concession to third parties, free of charge and for an indefinite period, of the common trademark – Majority or unanimity of the concession – Question – Subsequent possibility of the co-owner of the trademark from the decision to grant the common trademark exclusively previously unanimously assumed – Configurability.
The First Civil Section of this Court, on the basis of Articles 267 Treaty on the Functioning of the European Union and 295 of the Code of Civil Procedure, asked the Court of Justice of the European Union to give a preliminary ruling on the following interconnected issues in terms of trademark communion and related implications: provide for the exclusive right of the owner of an EU trademark and at the same time also the possibility that the ownership belongs to more than one person pro quota, imply that the concession for use of the common trademark to third parties exclusively, free of charge and on a timed basis indeterminate, can be decided by a majority of the joint owners or if the unanimity of consents is required; – if, from the second perspective, in the case of national and community trademarks in communion between several subjects, an interpretation that establishes the impossibility of one of the joint owners of the trademark given in concession to third parties by unanimous decision is in conformity with the principles of Community law, free of charge and for an indefinite period, to unilaterally exercise the withdrawal from the aforementioned decision; or, alternatively, should an opposite interpretation be considered compliant with EU principles, that is, which excludes the co-owner being bound in perpetuity to the original event, in order to be able to release himself from it with effect on the deed of concession.
This request addressed to the Union judge postulates the need to identify uniform protection of trademarks, between domestic law and Community law.
The issues therefore involve the organic and systematic reconstruction of a regulatory framework, which includes – overlapping – both national provisions (essentially contained in Legislative Decree no. 30 of 2005, the so-called “industrial property code”, which took the place of the RD 21 June 1942, n. 929, the so-called “trademark law”), and community regulations (contemplated in particular in the EU Directive 2014/2436, amending the EU Directive 2008/95 / EC, and in the EC Regulation 2007/2009 of the Council, by EU Regulation 2017/1001).
Source Supreme Court of Cassation