Can you continue to use a trademark for a plant variety after a license expires?

Upon termination of a license agreement, an ex-licensee may no longer use a protected trademark in the course of trade. Although the plant variety right on a plant may expire - allowing the plant itself to be freely traded - the trademark right remains in effect. Thus, you may sell the plant under the generic variety name, but not under the specific brand name, unless that name has become the generic name.

The facts and context

In a dispute before the Dutch-speaking Enterprise Court in Brussels, Danish rose breeder Poulsen Roser and Belgian nursery De Grauwe faced off.

Poulsen holds several Union trademarks for roses, including the famous names “Ingrid Bergman,” “Nina Weibull” and “Rumba.” De Grauwe grew and sold these roses under license for many years. After the license agreement ended, however, the nursery continued to offer ‘Ingrid Bergman’ type roses. Among other things, the trademark remained visible on a tab (albeit less visible) of an online assortment list, and customers continued to place orders under this name.

The nursery defended itself by arguing that the marks were invalid. According to them, names such as “Ingrid Bergman” had become generic (descriptive of the plant variety) and no longer distinctive marks. Moreover, they argued that Poulsen was not using the marks “normally” in the EU.

The court's decision

The Brussels Enterprise Court ruled on April 29, 2025, largely in favor of the trademark owner Poulsen. The key points of the ruling are:

• Validity of marks: The trademarks are valid. The court confirmed that a trademark name (such as ‘Ingrid Bergman’) does not automatically coincide with the official variety name (in this case, ‘Poulsen man’). As long as the trademark name has not become the generic designation for the plant variety, trademark protection remains intact.
• Normal use: Poulsen was able to prove that the marks had been used “normally” in the EU for the past five years, including through invoices and catalogs. Use in at least one member state may already be sufficient for this.
• Trademark infringement: The court ruled that leaving the name “Ingrid Bergman” on an online assortment list, even on a second tab, qualifies as use in the course of trade. This constitutes trademark infringement.
• Internal codes: The use of abbreviations or codes in internal accounting systems or in the field (such as “NWEI” for Nina Weibull) was not considered an infringement because it is not directed at the customer and therefore not “in the course of business”.

Poulsen claimed damages based on tripling the license fee, referring to a clause in the old license agreement for undeclared production. The court rejected this:

• The breach took place after the end of the contract. Thus, the contractual sanction was not directly applicable.
• The court applied the “normal” license fee (EUR 0.542 per plant) as the basis for the damage calculation.
• Because the breach lasted longer than originally budgeted, the court adjusted the amount ex aequo et bono with an increase of 33%.
• Moral damages (for reputational damage) were denied due to lack of concrete evidence and the limited nature of the breach.

Legal analysis and interpretation

This statement offers an interesting perspective on the tension between the trademark law and the plant variety rights.

Distinctiveness vs. variety name

An important aspect in this case is the distinction between a trademark and a variety name. A variety name (such as ‘Poulsen-man’) is the generic name of a plant variety and should be freely usable by anyone after the expiration of the plant variety right. However, a trademark (such as ‘Ingrid Bergman’) serves to indicate commercial origin. Article 7 of the EU Trademark Regulation (EUTMR) prohibits the registration of descriptive signs, but as long as the trademark name does not coincide with the variety name, it is valid. The court thus confirmed that a plant may be freely traded under its variety name after the expiration of the plant variety right, but the trademark name remains exclusive to the holder.

The threshold for ‘economic use’

The court applies a strict but nuanced interpretation of Article 9 EUTMR. On the one hand, mere internal use (accounting codes, field designations) does not constitute infringement because the essential function of the trademark (indication of origin for the consumer) is not compromised. On the other hand, passive offering - such as forgetting to remove a name from an online Excel list - does suffice for infringement, even if the seller claims not to know about it.

The judgement also confirms established case law of the Court of Justice that “genuine use” of a Union trademark does not require that it be used in all member states; an economically real use in part of the Union (even one country) may be sufficient to prevent the trademark's lapse.

What this specifically means

This judgement has direct implications for breeders, growers and licensees in the agricultural sector, as well as beyond.

For tradmark owners and breeders

• Clear registration: Be sure to make a clear distinction between the official variety name (for plant variety rights) and the commercial name (the trademark). Register the commercial name as a trademark.
• Evidence of use: Keep meticulous records of the use of your marks (invoices, catalogs, websites) to fend off actions for revocation for “non-use”.

For (former) licensees

• Major cleanup after termination: Once a license ends, purge all external communications. Check not only your storefront, but also the “back end” of your Web shop, online PDF listings, metadata and old order forms. A forgotten tab in an Excel sheet can lead to damages.
• Correct designation: Has the plant variety right expired? Then you may sell the plant, but use only the generic variety name or a fancy name, not the registered trademark of the former licensor.
• Internal processes: You do not necessarily need to modify your internal records or field codes, as long as these codes are never visible to customers.

Frequently asked questions (FAQ)

Can I sell a plant under the old name if the plant variety right on it has expired?
It depends. You may freely use the official variety name (e.g., ‘Poulsen man’), because the variety right has expired. However, you may not use the registered trademark name (e.g., ’Ingrid Bergman') because the trademark right can be extended indefinitely over time.

Is the use of a trademark in my internal accounting an infringement?
No. As long as the use of the trademark or abbreviation is limited to internal systems (such as inventory management or scheduling) and not directed at external customers or market participants, there is generally no trademark infringement.

When is a trademark declared ‘expired’ for non-use?
A trademark owner must use his mark “normally” for a continuous period of five years. Failure to do so may result in the trademark being declared revoked. However, use in only one EU member state may be sufficient to maintain a Union trademark, provided it is real commercial use.

Conclusion

Ending a commercial partnership requires legal vigilance in Belgium. For ex-licensees, it is essential to strictly distinguish between products that are freely tradable and trademarks that remain the property of the partner. A minor administrative carelessness in an online catalog can lead to a trademark infringement conviction.