Case T‑7/17

John Mills Ltd

v

European Union Intellectual Property Office

(EU trade mark — Opposition proceedings — Application for EU word mark MINERAL MAGIC — Earlier national word mark MAGIC MINERALS BY JEROME ALEXANDER — Relative ground for refusal — Article 8(3) of Regulation (EC) No 207/2009 (now Article 8(3) of Regulation (EU) 2017/1001))

Summary — Judgment of the General Court (Second Chamber), 15 October 2018

1.      EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Absence of consent on the part of the proprietor of a mark to the registration applied for by an agent or a representative under its own name — Condition — Identity as between the trade mark of the proprietor and the mark applied for by the agent or representative of the proprietor

(Council Regulation No 207/2009, Art. 8(3))

2.      EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Absence of consent on the part of the proprietor of a mark to the registration applied for by an agent or a representative under its own name — Objective of preventing the misuse of the trade mark by the agent or representative

(Council Regulation No 207/2009, Art. 8(3))

3.      EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Absence of consent on the part of the proprietor of a mark to the registration applied for by an agent or a representative under its own name — Condition — Identity as between the trade mark of the proprietor and the mark applied for by the agent or representative of the proprietor — Criteria for assessment

(Council Regulation No 207/2009, Art. 8(3))

4.      EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Use of the mark in a form differing by elements not altering the distinctive character of the mark — Subject-matter and scope of Article 15(1)(a) of Regulation No 207/2009

(Council Regulation No 207/2009, Art. 15(1), second para., (a))

5.      EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Absence of consent on the part of the proprietor of a mark to the registration applied for by an agent or a representative under its own name — Word marks MINERAL MAGIC and MAGIC MINERALS BY JEROME ALEXANDER

(Council Regulation No 207/2009, Art. 8(3))

1.      According to Article 8(3) of Regulation No 207/2009 on the European Union trade mark ‘upon opposition by the proprietor of the trade mark, 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’.

That provision does not explicitly mention a condition of identity or one of similarity between the proprietor’s trade mark and the trade mark applied for by the agent or representative.

However, Article 8(3) of Regulation No 207/2009 is to be understood as intended to prevent the misuse of the proprietor’s trade mark by his agent or representative as such agents or representatives may exploit the knowledge and experience acquired during their business relationship with the proprietor and therefore improperly benefit from the effort and investment which the trade mark proprietor himself made. That provision in essence thus requires that there should be a direct link between the proprietor’s trade mark and the trade mark requested to be registered by the agent or representative in his own name. Such a link can exist only if the trade marks in question match.

That proposition is supported by the travaux préparatoires of the regulation on the Community trade mark. They provide a useful insight into the legislature’s intentions and suggest an interpretation whereby the earlier trade mark and the trade mark applied for must be identical –– not merely similar –– in order for Article 8(3) of Regulation No 207/2009 to apply.

The EU legislature originally envisaged in the pre-draft of the regulation relating to the Community trade mark that the provision at issue could also be applied in a case where the signs are similar. However, this option was not included in the final version of Article 8(3) of Regulation No 40/94 on the Community trade mark.

Likewise, in the Council of the European Union’s Document No 11035/82, which contains a summary of the conclusions of the Working Group on the regulation on the Community trade mark within the Council, the Working Group expressly indicated that it had not adopted the suggestion of a delegation that the provision concerned should also apply in cases of ‘similar’ trade marks for ‘similar’ products.

It follows from the above that the intention of the EU legislature was that Article 8(3) of Regulation No 207/2009 can be applied only if the proprietor’s trade mark and the mark applied for by the agent or representative of the proprietor are identical and not merely similar.

(see paras 23-28, 37)

2.      See the text of the decision.

(see para. 25)

3.      See the text of the decision.

(see para. 38)

4.      See the text of the decision.

(see para. 39)

5.      See the text of the decision.

(see paras 41-43)