General Court conjures legislative intent

Article 8(3) of the EU Trade Mark Regulation states that a trade mark shall not be registered where "an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor's consent, unless the agent or representative justifies his action."

This prohibition becomes necessary where an agent files an EUTM but the party with which it has a relationship may only have trade mark rights in other jurisdictions and so cannot oppose on the basis of earlier rights in the EU.

In an appeal before the General Court, it had to be deciding whether, to contravene Article 8(3):

• The trade mark filed by the agent must be identical to the proprietor's trade mark and for identical goods or services.
• A distributor of the proprietor in the European Union, with a close commercial relationship to the proprietor, could be considered an 'agent'.

The case concerned the applicant of a EUTM who had previously contracted to distribute the goods of a US registered trade mark owner. The US trade mark owner had a US registered trade mark for MAGIC MINERALS BY JEROME ALEXANDER covering mineral face powder. The distributor had filed for MINERAL MAGIC covering cosmetics, hair lotions and toiletry items.

The General Court agreed with previous reasoning in Adamowski v OHIM (T‑537/10 and T‑538/10, at 22) that the purpose of Article 8(3) is to prevent the misuse of the proprietor’s trade mark by his agent or representative, as agents or representatives may exploit the knowledge and experience acquired during their business relationship and therefore improperly benefit from the effort and investment which the trade mark proprietor himself made.

The Court went on to consider that the legislature had twice decided in drafting Article 8(3), not to include the word 'similar' in relation to the trade mark or the goods and services to be prohibited. The Court also considered Article 6 septies of the Paris Convention (which is referenced in the EUTMR) only makes a prohibition against filing 'this mark' by agents, which the Court felt must mean an identical mark to 'the mark' owned by the proprietor.

The Court finally held that Article 8(3) was drafted with the intention that the mark applied for must be identical, and that 'identity' should be interpreted as falling within the test set out in infringement of an identical trade mark as well as genuine use of a trade mark. This is interesting given the latter test that the differences should not 'alter the distinctive character' of the earlier mark is a broader test than the one used in the context of infringement. The Court did not go on to assess the identity of the goods or services but it is clear that 'hair lotions' and 'toiletries' would not have been considered identical to the earlier 'mineral face powder'.

Given the Board of Appeal had found that the marks were similar and not identical, the Court found that the application could not fall foul of Article 8(3) and should be registered. The second question on the scope of 'agency' was not considered.

This decision will be a controversial one. The Court has taken a very strict view of the intention behind Article 8(3). To do so, it has focused on the words used and those left out of the regulation, rather than the reasoning behind such an omission. It is difficult to see why the legislature would have meant to exclude exploitative marks which are similar enough to create a likelihood of confusion. The effect of this exclusion is that agents and representatives can take advantage of gaps in registered rights and use their commercial knowledge obtained through business relationships to exploit the trade mark registration system, at least in the EU.

It is likely that we have not heard the last of this.

Case ref: T-7/17