The Judgement of the Court of Justice of the European Union of 19th July 2012 refers to the preliminary ruling brought by the Cour d’appel de Bruselas in the proceedings between PIE OPTIEK SPRL against BUREAU GEVERS, S.A. and the European Registry for Internet Domains ASBL.
PIE OPTIEK is a Belgian company dedicated to the sale of contact lenses, glasses and other ophthalmological products through the Internet. It is the holder of a Benelux trademark, including the word mark «Lensworld». PIE OPTIEK runs the website www.lensworld.be.
BUREAU GEVERS is a Belgian industrial property consultancy.
WALSH OPTICAL is an American company with corporate domicile in New Jersey, which also operates in the area of Internet sales of contact lenses and optics items. WALSH OPTICAL operates the website www.lensworld.com since 1998, and was the holder of the Benelux trademark «Lensworld». The registration of this trademark was cancelled on 30th October 2006.
At the petition of WALSH OPTICAL, BUREAU GEVERS applied to EURid for the registration of the Internet domain «lensworld.eu» in its own name, but on behalf of WALSH OPTICAL. Said domain name was awarded to BUREAU GEVERS on 10th July 2006.
PIE OPTIEK opposed said award, in first instance before the Arbitration Court of the Czech Republic, and then before the Court of First Instance of Brussels, and later before the court bringing this preliminary ruling, the Cour d’appel de Bruselas.
It argued that the object of a trademark licence contract is not necessarily limited to the authorisation to work with the products or services registered with such trademark, but it may refer to all or a part of the rights of the trademark holder in question, including the authorisation to register a domain name.
Therefore the issue at hand is whether the term “licensee of prior rights” set forth in law, may refer to those persons who, without being holder of a trademark, have been authorised by the holder of a trademark solely for the registration of a domain with a name identical to the trademark.
The response of the Court is no, therefore, the rule must be interpreted in such a way that companies authorised solely to register in their own name, but on behalf of the holder of the trademark, a domain name identical or similar to said trademark, may not be considered “licensees of prior rights”.
Likewise, the Court recalls that only companies or business centres in the European Union have a licensee right on prior rights. Consequently, if a foreign company with a registered trademark similar to a European trademark registers a domain via a company authorised to do so for this sole purpose, it shall not have preference over a trademark registered by a company with residence or which has its business centre in the European Union.
Vilá Abogados
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9th of November 2012
