Analysis: “Article 8(3) of Regulation (EC) No 207/2009 is applicable to identical or similar marks for identical or similar goods and services” by Alberto Torralba
On November 11, 2020, the Court of Justice of the European Union (CJEU) rendered its judgment in the case EUIPO v John Mills (C-809/18 P). This ruling establishes that Article 8(3) of Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (the ‘Trademark Regulation’ now Article 8(3) of Regulation (EU) 2017/1001 of 14 June 2017 on the European Union trade mark) allows the holder of an earlier trade mark to oppose the registration of a trade mark applied for its agent or representative not only when the marks at issue are identical, but also when the signs are similar and cover similar goods or services.
Jerome Alexander Consulting Corp. is the owner of the American word mark ‘MAGIC MINERALS BY JEROME ALEXANDER’, designating the goods ‘Face powder featuring mineral enhancements’. John Mills Ltd is responsible, under a distribution agreement, for distributing the goods of Jerome Alexander Consulting within the European Union and worldwide. On September 18, 2013, John Mills applied, in its own name, for registration of the word sign ‘MINERAL MAGIC’ as a European Union trade mark for cosmetics.
Jerome Alexander filed a notice of opposition relying on Article 8(3) of the Trademark Regulation according to which ‘a trade mark shall not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action’.
The opposition was initially dismissed, but the Board of Appeal of the EUIPO annulled the Opposition Division’s decision and refused the application for registration of a trade mark by John Mills. John Mills appealed the decision before the General Court of the European Union, which overturned the EUIPO’s decision essentially on the basis that Article 8(3) of the Trademark Regulation does not apply if the signs at issue are not identical. The EUIPO appealed this decision before the CJEU.
The CJEU acknowledges that the wording of Article 8(3) of the Trademark Regulation does not explicitly state whether it applies only where the marks at issue are identical or also when they are similar. However, although the EU legislature expressly refused to state that Article 8(3) of the Trademark Regulation applies in cases where there is similarity between the marks, the CJEU holds that it is apparent from the travaux préparatoires that the choice of the EU legislature was for Article 8(3) of the Trademark Regulation to reproduce Article 6 septies of the Paris Convention, which should be interpreted as also applying to cases where the marks are similar.
A restrictive interpretation of Article 8(3) would call into question the general scheme of the Regulation, as the trade mark proprietor would be deprived of the possibility of opposing the registration of a similar mark by his agent or representative, while the agent or representative would be entitled to file an opposition to the application for subsequent registration of the initial mark by the proprietor on the ground of their similarity.
The CJEU points out that interpreting Article 8(3) of the Trademark Regulation as also covering similar marks is in line with its objective of preventing the misuse of the earlier mark by the agent or representative of the proprietor of that mark, and such misuse is also likely to occur where the marks at issue are similar.
Having established the above, the CJEU considered that it is appropriate to give a final ruling on the action brought by John Mills, which required assessing the concept of ‘agent or representative’; and the criteria under which the similarity of trade marks at issue shall be examined in the context of Article 8(3) of the Trademark Regulation.
1) Concept of ‘agent or representative’
The CJEU confirms the understanding of the EUIPO that the concept of ‘agent or representative’ is to be interpreted broadly, and covers all forms of relationship based on a contractual agreement under which 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.
2) Similarity of the trade marks at issue
Regarding similarity of the trade marks at issue in relation to Article 8(3) of the Trademark Regulation , the CJEU establishes that it is not to be assessed by reference to the likelihood of confusion in relation to their perception by the relevant public in the European Union. Additionally, and for reasons similar to the ones that justify that Article 8(3) of the Trademark Regulation also applies when the trade marks at issue are similar, the CJEU considers that this provision also applies where the goods or services for which registration of the mark is sought and those covered by the earlier mark are similar.
This CJEU judgment is important because it confirms the EUIPO’s understanding and application of Article 8(3) of the Trademark Regulation, as shown in the EUIPO Guidelines for Examination, regarding both (i) the concept of ‘agent or representative’, and (ii) the applicability of such provision to cases where the marks at issue are similar. The judgment thus avoids the need to amend the EUIPO Guidelines for Examination, as would have been required if the judgment from the General Court had been maintained.
The CJEU judgment also confirms that such similarity is not to be determined on the basis of the existence of a likelihood of confusion, that condition being specific to Article 8(1)(b). However, the CJEU judgment does not include specific considerations in this regard and, although it accepts the findings of the EUIPO Board of Appeal that the signs were similar taken as a whole, it does not explicitly refer to the EUIPO’s consideration that the relevant criterion for this purpose is the equivalence, in economic or commercial terms.
Alberto Torralba is a practising lawyer in Madrid, Spain. His expertise covers intellectual property law, with a special focus on patent litigation.