The matter at hand
PJ initiated an application for a European Union trade mark for the work mark ‘Erdmann & Rossi’. Subsequently, Erdmann & Rossi sought to invalidate the mark on the basis of Art. 59(1)(b) of Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark. The EUIPO’s Cancellation Division dismissed the application for invalidity in its entirety. Subsequently, Erdmann & Rossi filed a notice of appeal at EUIPO. The Fourth Board of Appeal of EUIPO upheld the appeal and annulled the Cancellation Division’s decision.
PJ initiated an action for annulment before the General Court. The application was signed by Mr. S., acting as lawyer. EUIPO raised a plea of inadmissibility under Article 130(1) of the Rules or Procedure of the General Court. In addition, the EUIPO informed the court that the contested mark had been registered on 28 February 2017, under the ownership of its new proprietor, PC.
The General Court observed that PJ, a co-founder and one of the two partners in law firm “Z”, had instructed, Mr. S, representing the firm, to handle the case before the General Court. The law firm, a société civile professionnelle (professional partnership), had separate legal personality from PJ and the decisions were made unanimously. Consequently, the General Court found that PJ had relevant control over all decisions of the law firm, including those of Mr. S. Due to this close relationship, the General Court dismissed the appeal as inadmissible, noting that the application initiating the proceedings had not been signed by an independent lawyer.
The General Court ruled that PJ must be represented by an attorney with the legal right to appear before a Member State court. PJ and PC each lodged an appeal to the ECJ. This appeal addresses the procedural requirement of being represented by an independent legal adviser under Article 19 of the StatueProtocol [No 3] on the Statute of the Court of Justice of the European Union of the Court.
The judgment of the ECJ
The ECJ, citing precedents such as AM&S (C-155/79) and Akzo Nobel (C-550/07 P), clarifies that the concept of a lawyer’s ‘independence’. Originating in the context of document confidentiality in competition matters and the confidentiality obligations that the legal profession upholds. The meaning of this concept has evolved in terms of representation before the ECJ. This concept now mainly revolves around protecting the interest of the client in compliance with the legal and professional rules and codes of conduct (Uniwersytet Wroclawski v REA (C-515/17 P, C-561/17 P)).
The ECJ emphasizes that the requirement of the independence of lawyers (in the specific context of Article 19 of the Statute) involves both negative elements (lack of employment relationship) and positive elements (adherence to professional ethical obligations). The ECJ stresses that the independence of a lawyer implies that there is no employment relationship between the lawyer and the client. When defining the positive aspect of a lawyer’s ‘independence’. The ECJ emphasises that lawyers should not have affiliations that clearly hinder effective representation, avoiding connections that impede the defence of the client’s interest within the legal and professional norms.
The ECJ does note that the lawyer’s relationship with their law firm or its partner does not automatically negate independence (paragraph 78). However, the ECJ states that “although an associate lawyer working in a firm is presumed to satisfy, in principle, the requirements of independence within the meaning of Article 19 of the Statute of the Court of Justice of the European Union, including where he or she performs his or her duties under a contract of employment or in the context of another subordinate relationship, a distinction must be made according to the situation of the client represented.” (paragraph 80).
Further the ECJ finally concludes: “Whereas the situation in which the client, whether a natural or legal person, is a third party in relation to the law firm in which the associate in question carries out his or her duties does not raise any particular problem as to that associate’s independence, the situation is different from the situation in which the client, a natural person, is himself or herself a partner and founding member of the law firm and may, therefore, exercise effective control over the associate. In the latter situation, it must be held that the links between the associate lawyer and the partner client are such as manifestly to undermine the independence of the lawyer.” (paragraph 81).