Consent of Right Holder Required for a License Transfer in the Context of a Lease Contract

KOUKAL, Pavel. Consent of Right Holder Required for a License Transfer in the Context of a Lease Contract. GRUR International. Oxford: Oxford University Press, 2023, vol. 72, No 8, p. 784-785. ISSN 2632-8623. Available from: https://dx.doi.org/10.1093/grurint/ikad053.

Basic information

• Original name: Consent of Right Holder Required for a License Transfer in the Context of a Lease Contract
• Authors: KOUKAL, Pavel (203 Czech Republic, guarantor, belonging to the institution).
• Edition: GRUR International, Oxford, Oxford University Press, 2023, 2632-8623.

Other information

• Original language: English
• Type of outcome: Article in a journal
• Field of Study: 50501 Law
• Country of publisher: United Kingdom of Great Britain and Northern Ireland
• Confidentiality degree: is not subject to a state or trade secret
• WWW: Repozitář MU Web nakladatele
• RIV identification code: RIV/00216224:14220/23:00131551
• Organization unit: Faculty of Law
• Doi: http://dx.doi.org/10.1093/grurint/ikad053
• Keywords in English: Trade Mark Law; Czech Republic; Consent; Licence Agreement; Industrial Property; Lease Contract
• Tags: rivok
• Tags: International impact, Reviewed

Abstract

This case-study analyzes the legal implications surrounding the transfer of industrial property licenses within the context of lease agreements, focusing on the requirement for right holder consent. The study delves into the Czech legal framework, referencing Act No. 89/2012 Coll. (Civil Code) and Act No. 513/1991 Coll. (Commercial Code), with particular attention to Secs. 2361, 2365, 2178, 3028(3), 508, and 511. The paper explores the intricate intersection of lease contracts and industrial property rights, centering on the need for consent from the owner of the industrial property right. The analysis stems from a notable case decided by the Supreme Court (Nejvyšší soud) on October 31, 2022, with case reference 23 Cdo 2495/2022. The case involves the utilization of trademarked assets within a lease agreement. The applicants, co-owners of DEPROS and DEPROSAN trademarks, initiated legal action against a lessee, alleging unauthorized use of their trademarks in leased business operations. The Supreme Court's decision underscores that a licensee's right to use industrial property remains contingent upon the consent of the right holder, even when transferred within the confines of a lease agreement. The case-study emphasizes the distinction between acquiring the right to use the industrial property and becoming the actual owner of said property. It argues that the rights transferred are relative and limited to the terms specified within the license agreement. Additionally, the study delves into the evolution of legislation, particularly with respect to the transition from the old Commercial Code to the current Civil Code. It scrutinizes the principles governing the transfer of licenses, noting that licenses are typically inalienable unless expressly agreed upon by the licensor. The research illuminates the specific provisions within the legal codes, such as Secs. 479(2) and 488g(1), pertaining to the transfer of industrial property licenses.

Links

• MUNI/A/1172/2022, interní kód MU: Name: Fostering Internationally Oriented Scientific Results of PhD Students in Intellectual Property Law

Investor: Masaryk University, Fostering Internationally Oriented Scientific Results of PhD Students in Intellectual Property Law