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The Court of Justice issued a judgment on 11 November 2020 (C-809/18 P; MINERAL MAGIC) in which it had the opportunity, for the first time, to establish the requirements that must be fulfilled for application of Article 8(3) of the Regulation on the European Union Trademark (EUTMR).

This precept, which has its origin in Article 6septies of the Paris Convention, concerns the case where an agent (person linked commercially with the proprietor of a foreign trademark) applies in his own name for the trademark of said proprietor without the proprietor’s consent. This is known informally as the case of the “unfaithful agent”.

The background to the dispute leading to the judgment in question can be summarised as follows. The UK company JOHN MILLS filed an application for the European Union trademark MINERAL MAGIC to cover a range of goods in class 3. Prior to the application, there was a distribution agreement between JOHN MILLS and the US company JEROME ALEXANDER CONSULTING in relation to goods sold under the designation MAGIC MINERALS BY JEROME ALEXANDER. Having become aware of the filing of the mark MINERAL MAGIC, the US company filed an opposition invoking the application of Article 8(3) EUTMR. They cited, among others, the existence of the registered US trademark MAGIC MINERALS BY JEROME ALEXANDER also covering goods in class 3.

The main issue already addressed in the proceedings before the EUIPO was whether Art. 8(3) EUTMR was applicable when, as in this case, the word designations of the EU mark and the US mark were not completely identical, and the goods covered by the respective marks were not identical either (at least not completely).

Since the dual conditions of identical marks and identical goods were not present, the EUIPO’s Opposition Division rejected the US company’s arguments. However, the subsequent appeal was accepted by the EUIPO’s First Board of Appeal and the mark MINERAL MAGIC was thus refused. The Board of Appeal adopted a flexible interpretation of the provisions of Article 8(3) EUTMR, finding that they could also be applied when the marks in dispute are similar either in respect of the marks or the goods covered.

JOHN MILLS lodged an appeal, which was accepted by the General Court in a judgment dated 15 October 2018 (T-7/17). The General Court essentially adopted a literal interpretation of Article 8(3) EUTMR, which refers to “the trademark”, meaning that, in the opinion of the General Court, the foreign mark and the mark applied for must be the same and, therefore, identical. Moreover, in support of its view, the General Court referred to the preparatory work carried out for the drafting of Regulation 40/94 on the Community trademark. This included a document which expressly indicated that the suggestion of a delegation that the provision concerned should also apply in cases of ‘similar’ trademarks for ‘similar’ goods, had not been adopted. For the General Court, since the wording of Article 8(3) is so clear, there was no need to use other interpretative sources, such as, for example, Article 6septies of the Paris Convention. Consequently, it held that since there was only a mere similarity between the marks in conflict, the conditions for application of Article 8(3) EUTMR were not present.

The Court of Justice, on the other hand, considered that for the application of Article 8(3) EUTMR, it is essential to take into account Article 6septies of the Paris Convention, since the European Union is a member of the World Trade Organization and, as such, is obliged to adhere to the TRIPS Agreement which, in turn, provides that members shall comply with Articles 1 to 12 of the Paris Convention.

While the Court of Justice recognises that in the French-language version (which is the authentic version) of Article 6septies of the Paris Convention the expression ‘cette marque’ is used in reference to the earlier mark, it nevertheless studies the background to the provision. In this regard, the Court of Justice states that in the Acts of the Conference of Lisbon of 1958 (the Conference where the provision was introduced) it is indicated that a trademark applied for by the agent or representative of the proprietor of the earlier mark may also be covered by that provision where the mark applied for is similar to that earlier mark.

Thus, the Court of Justice does not assume that Article 8(3) EUTMR (and its originating provision, Article 6septies of the Paris Convention) only applies where the dual conditions of identical marks and identical goods/services are present and it acknowledges that, in principle, it can also be applied in cases of “similarity”. And in this regard (and for me this argument is very convincing) the Court of Justice clearly states that “if Art. 8(3) EUTMR were only applied in cases where the marks at issue are identical (also including where the goods and/or services are identical), such an interpretation would have the effect of calling into question the general scheme of the European Union Trademark Regulation in that it would result in the proprietor of the foreign mark being deprived of the possibility of opposing, on the basis of Article 8(3), the registration of a similar mark by his agent or representative, even though the agent or representative, following such registration, would be entitled to file opposition, pursuant, in particular, to Article 8(1)(b), against the application for subsequent registration of the initial mark by that proprietor on the ground of its similarity to the mark registered by the agent or representative of that proprietor”.

On the basis of these arguments, the Court of Justice upheld the appeal and even addressed the substance of the matter, finding that in this case the requirements for application of Article 8(3) EUTMR were fulfilled and, therefore, the marks could not be permitted to coexist.

We can therefore conclude that this judgment is of great importance, given that it confirms the necessary conditions for the proprietor of a foreign trademark to be able to prevent the registration of a later mark applied for by his agent or representative. In summary, we can say that the conditions, which are cumulative, are the following.

1. The first condition is that, specifically in countries where trademarks are acquired through registration, the person intending to exercise his right must be the proprietor of a trademark in a country that is party to the Paris Convention or a member of the World Trade Organization.
 
2. The second condition is that a commercial relationship must have existed between the applicant and the proprietor of the earlier mark prior to the filing of the contested mark. In this regard, there is agreement that the terms “agent” or “representative” are to be interpreted broadly, including, for example, distributors, as in the case concerned in this judgment.
 
3. As for the final requirement, on which this judgment has provided clarification, it is not essential for the dual conditions of identical marks and identical goods/services to be present. The provision may also be applied in cases where there is similarity between the marks and similarity in the goods or services claimed by the respective marks.

If these requirements are fulfilled, Article 8(3) EUTMR and Article 6septies of the Paris Convention shall apply,unless, as specified in those legal provisions, the agent is able to justify his actions or has authorisation (which I understand must be express authorisation) from the proprietor of the foreign mark.

Author: Jesús Gómez Montero; Former Partner of Elzaburu and Member of the Advisory Board of the Alberto Elzaburu Foundation

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