Pie Optiek v Bureau Gevers, European Court of Justice
Pie Optiek had a website at lensworld.be and owned a Benelux figurative trade mark containing the word “lensworld”. A US business sold goods from its lensworld.com website and had a Benelux registered trade mark for “Lensworld”. When the .eu domain names first became available, Bureau Gevers, a European Union agency, was appointed by the US business to register lensworld.eu in BG’s name but on behalf of the US business. For that purpose, BG had been granted a trade mark licence to use the trade mark. Being the owner or licensee of a European Community Trade Mark or a national trade mark within the EU was a pre-condition of registering a .eu domain name when the .eu domain names first became available. BG was quick off the mark and beat Pie Optiek to it in the sunrise period for registering the .eu domain name. Pie Optiek objected and applied for BG’s trade mark registration to be transferred to it.
Following a protracted battle, the European Court of Justice has sided with Pie Optiek. A contract which granted a right to use intellectual property rights in return for a licence fee was not the same thing as a contract where the service provider carried out an activity for payment. BG’s contract was merely a contract for services and BG had no real right to use the brand other than to secure registration of the domain name for its non-EU client. This did not amount to a licence agreement for the purposes of trade mark law. Despite not being as quick to register the domain name, the EU-based business succeeded in securing the domain name in the long run.