4. Decăderea cesionarului din dreptul de a utiliza marca şi garanţia cedentului pentru evicţiune. Studiu de caz
4. Forfeiture of the assignee's right to use the trade mark and the assignor's security for eviction. Case study

Summary/Abstract: The compatibility between the function of a trade mark and the possibility of assigning it has given rise to considerable controversy in classical intellectual property doctrine. Starting from the characterization of the mark as a distinctive sign of the personality of the person who manufactures the product associated with the mark, it was held that the exclusive right to use the mark is not transferable. Whereas it transfers the exclusive ownership of the trade mark from the assignor to the assignee, the assignment of the trade mark would conflict with the function of the trade mark as an indication of the origin of the goods on which it appears and would create a likelihood of confusion arising from the change of titleholder. The disappearance of the link between the creator of the trade mark, in particular the patronymic mark, and the undertaking using the trade mark could lead the consumer, when purchasing a given product, to believe, mistakenly, that the creator of the trade mark contributed to the creation of that product, even though that is no longer the case. In the Community landscape, neither Directive 89/104 nor Directive 2008/95 have expressly provided for the possibility of assignment of the trade mark, the two legislative acts referred to being limited to the possibility of licensing the trade mark. From a European Union law perspective, the Treaties are without prejudice to the rules in Member States governing the system of property ownership, and the assignment of national trade marks is a matter for the national discretion of the Member States in matters of property. The opposing view held that a trademark corresponding to the name of a natural person is capable of being an autonomous subject of commercial transactions. It has been held that, for a patronymic mark to be liable to mislead the public, there must be more than a mere association between the words making up the mark and the name of another person, and that a change of proprietor of the mark, including by way of assignment, does not affect the function of the mark as a guarantee of the quality of the goods sold under that mark. Directive 2015/2436 repealing Directive 2008/95 expressly intervened to regulate the possibility of transfer of the trade mark, with or without the undertaking to which it belongs. Article 22 of Directive 2015/2346 thus provides that "(1) A trade mark may be transferred, independently of the transfer of the undertaking, in respect of some or all of the goods or services for which it is registered". In the context of the current rules, it is necessary to interpret the rules on industrial property in conjunction with the rules on the seller's warranty for eviction. The grantor of the right to exploit a trade mark is bound to guarantee against eviction resulting from his own acts, any clause to the contrary being null and void. Such an obligation shall, as a general rule, prevent the assignor from bringing an action against the assignee for revocation of the rights in the trade mark embodying the designer's name, unless his action is based on wrongful acts subsequent to the assignment which are attributable to the assignee. In Case C 168/24, referred to the Court of Justice of the European Union by the Cour de Cassation of France for a preliminary ruling, the Court of Justice of the European Union is called upon to rule on the grounds for revocation of a trade mark proprietor's rights. The analysis in this study will focus both on the possibility of revocation of the assignee's rights in the trade mark and on the correlation of such a sanction with the rules applicable to the buyer's eviction.

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