Due to the borderless nature of the Internet, it is often a hard question in which country right holders may file an action against online IP infringements. Concerning online infringement of EU trade marks, the CJEUhas now created (some) clarity in AMS Neve v. Heritage – C-172/18. Trade mark holders may sue not only in the infringer’s home country but also in the country to which the infringing offers for sale and advertising are directed. This results from Art 125 (5) UMV (formerly Art 97 (5) CTMR).Continue reading
Under Austrian law, holders of exclusive trademark licenses used to be allowed to take legal action against infringers by virtue of the exclusive license, i.e. even if the license agreement did not expressly confer such right to the licensee [OGH 4 Ob 178/00f, BOSS-Brillen II]. Only the non-exclusive licensee required an express grant of right to bring suit in order to enforce the trademark [OGH 4 Ob 209/02f, Brühl, ÖBl 2003, 87 (Hiti)].
Since a recent amendment of Section 14 (3) of the Austrian Trademark Protection Act that took place in 2019, each licensee (i.e. also the exclusive licensee) requires the consent of the licensor in order to enforce the licensed trademark against third parties. However, the holder of an exclusive license may bring such proceedings if the proprietor of the trademark, after having been noticed by the licensee, does not himself bring infringement proceedings within an appropriate period.Continue reading