Appeal brought on 20 December 2018 by the European Union Intellectual Property Office against the judgment of the General Court (Second Chamber) delivered on 15 October 2018 in Case T-7/17: John Mills v EUIPO

(Case C-809/18 P)

Language of the case: English

Parties

Appellant: European Union Intellectual Property Office (represented by: A. Lukošiūtė, Agent)

Other parties to the proceedings: John Mills Ltd, Jerome Alexander Consulting Corp.

Form of order sought

The appellant claims that the Court should:

annul the contested judgment;

order John Mills Ltd to pay the costs incurred by the Office.

Pleas in law and main arguments

Violation of Articles 8(3) of Regulation 207/2009¹

The General Court misinterpreted the provisions of Article 8(3) of Regulation 207/2009 by limiting its scope to the notion of ‘identity’ of the signs and attributing it the meaning proper to Article 8(1)(a) of Regulation 207/2009.

The General Court did not take sufficient account of the purpose of Article 8(3) of Regulation 207/2009, i.e. to prevent the misuse of a mark by the trade mark proprietor’s agent as the agent may exploit the knowledge and experience acquired during its business relationship with the proprietor and therefore improperly benefit from the effort and investment which the trade mark proprietor himself made, giving preference to an arguable literal interpretation. While it is a teleological approach to the interpretation of the EU trade mark law that is consistently applied by the EU judicature.

A literal interpretation does not lead either to the conclusion that Article 8(3) of Regulation 207/2009 applies only to identical marks. It is therefore enough if the signs at issue coincide in elements in which the earlier mark’s distinctive character essentially consists. On this basis the proper test for examining the conflicting marks under the Article 8(3) of Regulation 207/2009 is whether the EUTM application reproduces the essential elements of the earlier mark in such a way as to make it evident that the applicant is misappropriating the legitimate proprietor’s rights on its mark. In fact, the disloyal agent would be in a position to prevent not only any subsequent registration of the earlier mark by the original proprietor within the EU – but indeed any use thereof by the principal within the EU.

Violation of Article 36 of the Statute of the Court of Justice

The judgment under appeal is tainted by contradictory reasoning to the extent that it accepts, on the one hand, that signs are identical where one reproduces the other without any modification or addition and, on the other hand, that they are also identical where variations are made without altering the distinctive character (see paragraphs 38-40 of the Contested Judgment). Such reasoning is contradictory since the same notion of ‘identity’ is applied to distinct legal and factual situations and is erroneously given two different contents.

The General Court did not provide any reasons as to why the conflicting trade marks do not fall under the scope of Article 8(3) of Regulation 207/2009 following the test it introduced in paragraph 39 of the contested judgment.

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¹ Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009, L 78, p. 1).