The Court of Justice issued its judgment of November 11, 2020 (C-809/18 P; MINERAL MAGIC), in which, for the first time, it had the opportunity to establish the requirements that must be met for the application of Article 8(3) of the European Union Trademark Regulation (EUTMR).
This provision—which is based on Article 6 septies of the Paris Convention (PC)—covers the situation in which an agent (a person with a commercial relationship with the owner of a foreign trademark) applies for the foreign owner’s trademark in their own name without the owner’s consent. In layman’s terms, this is known as the “unfaithful agent” scenario.
The facts underlying the judgment in question can be summarized as follows. The British company JOHN MILLS filed an application for the European Union trademark MINERAL MAGIC to distinguish various goods in Class 3. Prior to the application, there was a distribution agreement between JOHN MILLS and the U.S. firm JEROME ALEXANDER CONSULTING regarding goods marketed under the name MAGIC MINERALS BY JEROME ALEXANDER. Upon learning of the filing of the “MINERAL MAGIC” trademark, the U.S. firm filed an opposition, invoking Article 8(3) of the EU Trademark Regulation. Among other grounds, it cited the existence of the U.S. trademark registration for “MAGIC MINERALS BY JEROME ALEXANDER,” also for goods in Class 3.
The fundamental issue, which had already been addressed by the EUIPO, was whether Article 8(3) of the EU Trademark Regulation could be applied when, as in the present case, the designations of the European trademark and the U.S. trademark were not completely identical, nor were the goods covered by both trademarks identical—at least in their entirety.
Since there was no identity between the marks, the EUIPO Opposition Division rejected the U.S. firm’s claims. However, the subsequent appeal was upheld by the First Board of Appeal of the EUIPO, and as a result, the MINERAL MAGIC trademark was, at that time, refused. The Board adopted a flexible interpretation of the provision set forth in Article 8(3) of the EU Trademark Regulation, ruling that it could also apply when the marks in question were similar both in their designations and in relation to the goods they designated.
After JOHN MILLS filed the appropriate appeal, the General Court upheld it in its judgment of October 15, 2018 (T-7/17). Essentially, the General Court interprets Article 8(3) of the EUTM Regulation literally, which refers to “that mark,” implying—in the General Court’s view—that the foreign mark and the mark applied for must be the same and, consequently, identical. Furthermore, to support its position, the General Court cites the preparatory work conducted during the drafting of Draft Regulation No. 40/94 on the Community Trade Mark. Among these background materials was a document that explicitly stated that a delegation’s proposal—that the provision in question also apply to cases involving “similar” trademarks for “similar” goods—had not been accepted. In the General Court’s view, since Article 8(3) is so clear in its wording, there was no need to rely on other interpretive sources, such as Article 6f of the Paris Convention. Therefore, it held that, since there was only a mere similarity between the marks at issue, the conditions for applying Article 8(3) of the EU Trade Mark Regulation were not met.
The Constitutional Court, on the other hand, holds that in order to apply Article 8.3 of the TFEU, it is essential to take into account Article 6 septies of the GATT, since the European Union is a member of the World Trade Organization and, as such, is obligated to comply with the TRIPS Agreement, which, in turn, stipulates that Articles 1 through 12 of the GATT must be respected.
Well, although the Court of Justice acknowledges that the French version (which is the authentic one) of Article 6 septies of the CUP uses the expression“cette marque”to refer to the earlier trademark, this does not mean that the background of the provision should not be examined. In this regard, the Court of Justice states that the Proceedings of the 1958 Lisbon Conference—which was the conference at which this provision was introduced—indicate that a trademark applied for by the agent or representative of the owner of the earlier trademark may also be protected under that provision when the trademark applied for is similar to the aforementioned earlier trademark.
In other words, the Court of Justice does not take it for granted that Article 8(3) of the EUTM Regulation (and its predecessor, Article 6 septies of the CUP) applies only in cases of identical trademarks, and it already recognizes that, a priori, it may also be applied in cases of “similarity.” And in this regard—and I find this argument very convincing—the CJEU clearly states that“if Article 8(3) of the EU Trade Mark Regulation were to apply only to cases of identity between marks (including identity in use), such an interpretation would have the effect of calling into question the general concept of the European Union Trademark Regulation, insofar as it would result in the owner of the foreign trademark being deprived of the possibility of opposing, on the basis of Article 8(3), the registration of a similar trademark by his agent or representative, whereas the agent or representative, once such registration has been made, would be entitled, specifically under Article 8(1)(b), to file an opposition to the subsequent application for registration of the original trademark by that proprietor due to the similarity of that trademark to the trademark registered by the agent or representative of that same proprietor.”
Based on these arguments, the General Court grants the appeal and even addresses the merits of the case, concluding that, in the present case, the conditions for the application of Article 8.3 of the EU Trademark Regulation are met and, therefore, the trademarks are incompatible.
In short, we can conclude that this ruling is of great significance, as it confirms the requirements that must be met for the owner of a foreign trademark to prevent the registration of a subsequent trademark filed by their agent or representative. In summary, we can state that these requirements—which must all be met cumulatively—are as follows.
-
- The first requirement is that, specifically in countries where trademark rights are acquired by registration, the person seeking to assert their rights must be the owner of a trademark in a country that is a party to the Paris Convention or the World Trade Organization.
-
- The second requirement is that there must have been a business relationship between the trademark owners prior to the filing of the contested trademark application. In this regard, there is agreement that the terms “agent” or “representative” must be interpreted broadly, including, for example, a distributor, as in the case decided by this judgment.
- The last of the requirements—which is, in fact, the one analyzed in the judgment in question—holds that it is not essential for the conflicting trademarks to be identical; rather, the requirement may also apply in cases where there is a resemblance between the trademarks and a similarity in the goods or services claimed under both trademarks.
If these requirements are met, Articles 8.3 of the EU Trademark Regulation and 6 septies of the Spanish Trademark Code will apply, unless—as those provisions state—the agent can justify his or her actions or has authorization (which I understand must be express) from the owner of the foreign trademark.
Author:Jesús Gómez Montero; Former Partner at ELZABURU and Member of the Advisory Committee of the Alberto Elzaburu Foundation