The matter at hand
Mr Benjumea Bravo de Laguna filed an application for registration as an EU trade mark of a figurative sign containing the word element 'Shower Green'. However, for some reason which is not apparent from the judgment, Mr Torras Ferrazzuolo considered that he was the lawful proprietor of that trade mark and brought an action before the Juzgado de lo Mercantil de Alicante (Commercial Court, Alicante, Spain) to recover ownership of that trade mark. The case was litigated all the way up to the Tribunal Supremo (Supreme Court, Spain).
Considering that the regime for the recovery of ownership provided for in Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark is concerned only with the case of a disloyal agent or representative (Article 18), the Tribunal Supremo asked, in essence, whether national provisions relating to an action for the recovery of ownership of a trade mark may be applied, in this case a national provision under which a person harmed, by the trade mark registration which was applied for in fraud of his rights or in breach of a legal or contractual obligation, is entitled to claim ownership of that trade mark.
The judgment of the ECJ
The ECJ recalls that Article 16(1) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark states that, unless provided otherwise, an EU trade mark as an object of property shall be dealt with in its entirety, and for the whole area of the European Union, as a national trade mark registered in the Member State in which, according to the Register of EU trade marks, the proprietor has his seat or his domicile or failing this an establishment.
The ECJ further notes that Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark does not govern actions for recovery of ownership of an EU trade mark in cases other than that of a trade mark registered in the name of an agent or representative of the proprietor of that trade mark without that proprietor’s authorisation. “Consequently, as provided for in Article 16 of [Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark], an EU trade mark as an object of property must, in cases falling outside that envisaged in Article 18 of that regulation, be dealt with as a national trade mark registered in the Member State determined in accordance with the criteria set out in Article 16. Accordingly, provided that a situation does not fall within the scope of Article 18 (…), it is the national legislation of the Member State which will apply to actions for the recovery of ownership of an EU trade mark” (paragraphs 36 and 37).