2017/12/6 - 23 Cdo 1780/2017 (summary)

Judgement of the Supreme Court of 6 December 2017, Ref. No. 23 Cdo 1780/2017

(Trademark, damages, locus standi)



Trademark owners (defendants) provided the plaintiff with a non-exclusive license as they verbally concluded the contract under German law. The defendants subsequently infringed the rules on trademark protection and therefore, the plaintiff had to pay the costs of legal representation in order to remedy this situation. Subsequently, he sought compensation for these costs in court. Even though defendants argued that there is a lack of locus standi, the lower courts concluded that since the German law permits the license agreement to be concluded verbally, the applicant is actively legitimated to bring such action. The only condition for exercising the right under article 2 of Act No. 221/2006 Coll., on the enforcement of industrial property rights, is that the person who enforces the right is in the position of the acquirer of the violated right.

The Supreme Court has dealt with a question of active legitimation (locus standi) of the plaintiff. Act on the enforcement of industrial property rights is a transposition of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights. In the issue of locus standi in cases of the license agreements, this directive by footnote refers to national law. In this case, such law is the Czech law. However, according to the defendants, the license agreement under Czech law can only be concluded in writing. Nevertheless, the Supreme Court stressed that the purpose of the Directive was not to determine the applicable law. The purpose of this provision is to provide protection to all owners or users of intellectual property rights that are enforceable in the Czech Republic. Accordingly, these are not only the rights under Czech law, but also the rights enshrined in the international conventions and EU law. Users of industrial property rights cannot be deprived of the possibility to enforce these rights in the Czech Republic simply because the right to use industrial property right has been granted to them in accordance with the law of their home state. Thus, the reference to 'special legislation' under national law does not refer only to the Czech law, but generally to the legislation governing the license agreement as a contractual type. In the present case, locus standi to bring an action was therefore given.