The matter at hand

Bonnanwalt initiated an application for revocation before the EUIPO against an EU trade mark on the basis of non use (Article 58(1)(a) 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 trade mark was largely revoked by the EUIPO but was upheld for a few remaining services. Disappointed by this outcome, Bonnanwalt filed an appeal at the General Court, seeking revocation of the trade mark in its entirety.

The General Court found that the lawyer of Bonnanwalt was employed by a law firm that was owned and controlled by the CEO of Bonnanwalt. The lawyer in question was, according to the General Court, therefore, insufficiently independent according to Articles 51(1) of the Rules of Procedure of the General Court and 19(3),(4) of the Statute of the Court of Justice. Bonnanwalt filed an appeal before the ECJ.

The judgment of the ECJ

Regarding the concept of "lawyer" (and its (in)dependence), the ECJ stresses that, in the absence of any reference to the national law of the Member States in the Statute of the Court of Justice, that concept must be interpreted autonomously and uniformly throughout the European Union (Paragraph 46).

The ECJ, citing PJ v EUIPO (case C-529/18 P), clarifies that the requirement of the independence of lawyers, in the specific context of Article 19 of the Statute of the Court of Justice, 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, in this regard, recalls that the purpose of the task of representation by a lawyer consists first and foremost in protecting and defending the interests of the principal to the best of one's ability (Paragraphs 49-50).

The ECJ observes that the General Court determined that, while there was not a direct employment relationship between Bonnanwalt and its lawyer, the lawyer's employment under the law firm, owned and directed by Bonnanwalt, implied potential influence over the lawyer's independence. The General Court concluded that this could affect the lawyer's professional opinion, suggesting a lack of independence due to the employment structure (Paragraphs 57-58). The ECJ does not concur with the findings of the General Court and rules that evidence of formal and indirect dependency should not ipso facto result in the lawyer's assumed lack of independence (Paragraph 61). Since there is no evidence that the lawyer was under the direct control of the CEO of Bonnanwalt, and there were no clear indications that the lawyer's ability to defend the appellant was compromised, the presumption of the lawyer's independence should stand (Paragraph 62). The ECJ upholds the appeal.