The Court of Justice has issued the ruling of November 11, 2020 (C-809/18 P; MAGIC MINERAL) in which, for the first time, he had the opportunity to establish the requirements that must be met for the application of article 8.3 of the European Union Trademark Regulation (EMR).
This precept - which has its antecedent in article 6 septies of the Paris Union Convention (CUP)- considers the case in which an agent (a person commercially linked to the owner of a foreign trademark) applies for the trademark of the foreign owner in his or her name without having the latter's consent. In colloquial terms, this is the case that is called the “unfaithful agent” case.
The facts that give rise to the sentence we are discussing can be summarized as follows. The English company JOHN MILLS applied for the European Union trademark MINERAL MAGIC to distinguish various products in class 3. Prior to the application, there was a distribution contract between JOHN MILLS and the North American firm JEROME ALEXANDER CONSULTING referring to products marketed with the denomination MAGIC MINERALS BY JEROME ALEXANDER. Informed of the filing of the MINERAL MAGIC trademark, the North American firm filed an opposition alleging the application of Article 8.3 EMR. Among others, it alleged the existence of the registration of the US trademark MAGIC MINERALS BY JEROME ALEXANDER also for products in class 3.
The fundamental question that was already clarified before the EUIPO was whether Article 8.3 EUTMR could be applied when, as in the present case, the names of the European trademark and the North American trademark were not completely identical and were not identical either - at least in its entirety - the products distinguished by both.
Since dual identity did not exist, the Opposition Division of the EUIPO rejected the claims of the North American firm. However, the subsequent appeal was upheld by the First Board of Appeal of the EUIPO, so the MINERAL MAGIC trademark was, at that time, denied. The Chamber made a flexible interpretation of the case contemplated in Article 8.3 EUTMR stating that it could also be applied when the disputed marks were similar both in their names and in relation to the distinguished products.
Once the appropriate appeal was filed by JOHN MILLS, the General Court upheld it by ruling of October 15, 2018 (T-7 / 17). Fundamentally, the TG makes a literal interpretation of article 8.3 EUTMR that speaks of “said trademark”, which means – in the opinion of the TG – that the foreign trademark and the trademark applied for must be the same and, consequently, identical. Likewise, and to ratify its thesis, the TG refers to the work carried out during the preparation of the Project of Regulation 40/94 of the Community Trademark. This background included a document which explicitly indicated that a delegation's proposal for the provision in question to also apply to cases of "similar" marks for "similar" products had not been accepted. For the TG, article 8.3 being so clear in its wording, there was no need to resort to other interpretative sources such as, for example, article 6 septies CUP. Therefore, he understood that since there was only a mere similarity between the disputed marks, the prerequisites for applying Article 8.3 EUTMR were not met.
The CJ, on the contrary, understands that to apply article 8.3 EUTMR it is essential to take into account article 6 septies CUP, since the European Union is part of the World Trade Organization and, as such, is obliged to comply with the TRIPS which, in turn, declares that articles 1 to 12 of the CUP must be respected.
Well, although the CJ recognizes that in the French version (which is the authentic one) of article 6 septies CUP the expression "this brand» for the purposes of designating the earlier mark, the background of the standard should not be neglected. In this regard, the CJ affirms that the Minutes of the Lisbon Conference of 1958 - which was the Conference in which such a rule was introduced - indicate that a trademark applied for by the agent or representative of the owner of the earlier trademark also It may be covered by that provision when the trademark applied for is similar to the aforementioned previous trademark.
That is to say, the CJ does not take for granted that article 8.3 EUTMR (and its predecessor 6 septies CUP) only applies in the case of double identity and already recognizes that, beforehand, can also be applied in cases of “similarity”. And in this regard, - and for me this argument is very convincing - the TJ clearly points out that “If the art. 8.3 EUMR were only applied to the case of identity between brands (also including the applicative identity), such an interpretation would have the effect of calling into question the general conception of the European Union Trademark Regulation to the extent that it would have the consequence that the owner of the foreign trademark would be deprived of the possibility of opposing, on the basis of Article 8.3, the registration of a similar trademark by its agent or representative, while the agent or representative, once such registration has been made, would be empowered, specifically under Article 8.1 b), to file an opposition to the subsequent application for registration of the initial trademark by that owner due to the similarity of this mark with the trademark registered by the agent or representative of that same owner".
On the basis of these arguments, the CJ upholds the appeal and even goes into the merits of the matter in such a way that it considers that, in the present case, the applicable requirements of Article 8.3 EUTMR are met and, therefore, the brands are incompatible.
In short, we can conclude by stating that this sentence It has great significance because confirms what are the necessary requirements for the owner of a foreign trademark to prevent the registration of a subsequent trademark whose request has been made by his agent or representative. In summary, we can point out that such requirements - which must be met cumulatively - are the following.
- The first requirement is that, specifically in countries where the trademark is acquired by virtue of registration, the person who intends to assert his right is the owner of a trademark in a country that is party to the Paris Union Convention or the Organization World Trade.
- The second requirement is that a commercial relationship exists between the trademark owners prior to the application for the contested trademark. In this regard, there is agreement that the terms “agent” or “representative” must be interpreted broadly; including, for example, the distributor as is the case tried by this ruling.
- The last of the requirements, which is ultimately the one analyzed by the aforementioned ruling, refers to the fact that double identity between the opposing brands is not essential, but can also be applied in cases where there is similarity between the distinctives and similarity in the products or services claimed in both brands.
If such requirements are met, articles 8.3 EUTMR and 6 septies CUP will apply., unless - as the aforementioned precepts say - the agent can justify his actions or has authorization (which I understand must be express) from the owner of the foreign trademark.
Author Jesus Gomez Montero; Former Partner of ELZABURU and Member of the Advisory Committee of the Alberto Elzaburu Foundation
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