The matter at hand

Jerome Alexander, a US based manufacturer of cosmetics and holder of the US registered word mark MAGIC MINERALS BY JEROME ALEXANDER, filed opposition proceedings against the application of an EUTM for the word mark MINERAL MAGIC (the “Opposed EUTM”) based, inter alia, on the relative ground in Article 8(3) EUTMR. The applicant of the Opposed EUTM is John Mills: a EU based distributor of Jerome Alexander

The General Court annulled the decision of the First Board of Appeal of EUIPO refusing the Opposed Trade Mark on the basis of Article 8(3) EUTMR (‘the decision at issue’).  

By its first ground of appeal, the EUIPO criticised the General Court on the ground that it infringed Article 8(3) of the EUTMR by interpreting that provision as covering only the situation in which the earlier mark and the mark applied for by the agent or representative of the proprietor of the earlier mark are identical.

The judgment of the ECJ

The ECJ annuls the decision of the General Court and decides that the Opposed EUTM should indeed be refused on the basis of Article 8(3) EUTMR.

The ECJ furthermore finds that, although the wording of that provision suggests a close relationship between ‘the’ earlier mark and the mark applied for by the agent or representative of the proprietor of the earlier mark, that provision does not, however, explicitly state, as the General Court observed, whether it applies only in the case where the mark applied for by that agent or representative is identical to the earlier mark or whether cases in which the marks at issue are similar may also come within the scope of that provision (paragraph 42).

The ECJ finds that it cannot be inferred from the travaux préparatoires relating to Article 8(3) of the EUTMR and Article 6septies(1) of the Paris Convention, that, by reason of the fact that that provision does not mention ‘similarity’ between the earlier mark and the mark applied for by the agent or representative, the scope of that provision is limited solely to cases in which the marks at issue are identical. The provision’s aim gives way to interpret the notion of “the trade mark” more broadly, to also include similar marks (paragraphs 68-75).

In deciding the action before the General Court, pursuant to Article 61 of the Statute of the Court of Justice of the European Union, the ECJ finds that the First Board of Appeal of EUIPO rightly refused the Opposed EUTM on the basis of Article 8(3) EUTMR. In doing so, the ECJ notes that the objective of Article 8(3) EUTMR is to prevent the misuse of the earlier mark by the agent or representative of the proprietor of that mark, as those persons may exploit the knowledge and experience acquired during their business relationship with the proprietor and may therefore improperly benefit from the effort and investment which the proprietor himself has made (paragraph 83).

It follows that the attainment of that objective requires a broad interpretation of the concepts of ‘agent’ and ‘representative’ within the meaning of that provision (paragraph 84). According to the ECJ: “The Board of Appeal therefore did not commit an error of law by stating that those concepts must be interpreted in such a way as to cover all forms of relationship based on a contractual agreement under which one of the parties represents the interests of the other, with the result that it is sufficient, for the purposes of the application of that provision, that there is some agreement or commercial cooperation between the parties of a kind that gives rise to a fiduciary relationship by imposing on the applicant, whether expressly or implicitly, a general duty of trust and loyalty as regards the interests of the proprietor of the earlier mark” (paragraph 85).