"Licenses in OHIM Practice" is the title of an article in the current Trademark Reporter, May-June, 2009, Vol. 99, No. 3, published by the International Trademark Association (INTA). The authors, Verena von Bomhard, Hugh O'Neill and Anat Paz, are all with Lovells. According to the abstract,

"Council Regulation No. 207/2009 on the Community trade mark (CTMR) provides that CTMs may be the subject of licences. The CTM, may be licensed, exclusively or non-exclusively, for some or all of the goods or services for which it is registered and for the whole or part of the Community.

The CTMR contains only a few basic provisions applicable to licences for CTMs. These concern mainly the effects of a licence on the CTM as an object of property: Article 16 establishes that the CTM must be treated as an object of property of a member state of the European Union, either of the country where the proprietor is located or, if the proprietor has no presence in the EU, of Spain, where OHIM has its seat. This does not mean that a licence agreement must be subject to that same law. On the contrary, as far as contract law is concerned, general rules of private international law apply. OHIM’s Guidelines concerning licences confirm that the freedom of contracting parties to submit the licensing contract to a given national law is not affected by the CTMR.

The CTMR touches upon the relationship between licensee and licensor only insofar as trade mark infringements by the licensee are concerned. It also contains rules relating to the standing of the licensee in infringement proceedings based on the
CTM. Finally, it provides for registration of licences in the CTM Register or their recordal in the files of CTM applications, where applicable. None of these provisions however affects the standing of the licensee in inter partes proceedings before the Office. This is governed primarily by Articles 8, 53, 56 and 41 CTMR, in connection with the corresponding provisions of the Implementing Regulation. We will turn to these presently.

To establish locus standi, claimants relying on their rights as licensees or authorised parties must ensure that the initial notice to OHIM contains a statement of their status as such in addition to indicating the nature of their entitlement. Although OHIM allows parties to remedy such deficiencies after the opposition period,
failure to do so before the remedy period set by OHIM will render a matter inadmissible. Parties are also required to substantiate the claims made within the timeframe assigned by OHIM, failing which the opposition will be rejected as unfounded.

A proprietor seeking to prove use of its mark on the basis of use by a third party with consent enjoys favourable evidentiary presumptions when adducing evidence of such use. That use is presumed to be with consent and, as such, is proof of use of the mark. This presumption is rebuttable: the proprietor should be prepared to present evidence that the use was with its prior consent if the nature of the use is challenged.

OHIM plainly regards the licensor/licensee relationship as giving rise to the fiduciary relationship or link between the parties that is required for a bad faith claim to prosper. This is the case in relation to Article 8(3) CTMR, which empowers a mark’s proprietor to oppose a CTM application on the basis of a special form of bad faith (namely that of the unfaithful agent) as well as in relation to Article 52(1)(b) CTMR—which provides that a CTM application may be declared void on the basis of bad faith. Registration by a licensee of the licensor’s mark as a CTM without consent has been found to constitute bad faith separately under Articles 8(3) and 52(1)(b) CTMR".