Case T‑145/22

CEDC International sp. z o.o.

v

European Union Intellectual Property Office

Judgment of the General Court (Sixth Chamber), 28 June 2023

(EU trade mark – Opposition proceedings – Application for a three-dimensional EU trade mark – Shape of a blade of grass in a bottle – Earlier national trade marks – Relative ground for refusal – Article 8(3) of Regulation (EC) No 40/94 (now Article 8(3) of Regulation (EU) 2017/1001) – Concept of ‘agent’ or ‘representative’ – Requirement for a direct contractual agreement)

1. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Lack of consent on the part of the proprietor of a mark to the registration applied for by an agent or a representative in his or her own name – Condition – Proprietorship of the earlier mark by the opponent – Definition

   (Council Regulation No 40/94, Art. 8(3))

   (see paragraphs 39, 42-46)

2. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Lack of consent on the part of the proprietor of a mark to the registration applied for by an agent or a representative in his or her own name – Agent or representative – Definition – Scope – Existence of a contractual agreement of commercial cooperation directly between the parties

   (Council Regulation No 40/94, Art. 8(3))

   (see paragraphs 51-56)

Résumé

In 1996, Underberg AG (‘the intervener’) filed an application for registration of a three-dimensional trade mark consisting of the shape of a blade of grass in a bottle, in respect of spirits and liqueurs, ( 1 ) with the European Union Intellectual Property Office (EUIPO). In 2003, the predecessor in law to the applicant company CEDC International sp. z o.o. filed a notice of opposition to that application for registration ( 2 ) on the basis of a number of earlier signs claimed in, inter alia, various Member States of the European Union. The Opposition Division and, subsequently, the Fourth Board of Appeal of EUIPO rejected the opposition and dismissed the appeal respectively.

By judgment of 11 December 2014, ( 3 ) the General Court annulled the decision of the Fourth Board of Appeal and remitted the case to the Fourth Board of Appeal which, taking the view that the evidence submitted was not sufficient to prove the nature of use of the earlier marks relied on, dismissed the appeal. That decision was partially annulled by the judgment of the General Court of 23 September 2020 ( 4 ) on the basis of a failure to state reasons. Following a reallocation, the Fifth Board of Appeal also dismissed the appeal on the ground that, first, the intervener could not be considered to be acting as an agent or representative of the applicant and, secondly, the use of the non-registered mark claimed had not been proved.

The General Court, before which an action was brought, examined the application of Article 8(3) of Regulation No 40/94, ( 5 ) relating to the refusal of registration of a trade mark where an agent or representative of the proprietor of the trade mark applies for that registration in his or her own name without the proprietor’s consent, and clarified its case-law regarding the origin of the earlier mark, the concept of an agent or representative and the requirement for a direct contractual agreement.

Findings of the Court

First, the Court examined the condition that the opponent must be the proprietor of the earlier mark in order for an opposition to succeed on the basis of Article 8(3) of Regulation No 40/94. In that regard, it pointed out, first of all, that that provision refers to the ‘proprietor of the trade mark’, without specifying the kind of trade mark referred to. The concept of a ‘trade mark’ within the meaning of that provision covers, in addition to registered trade marks, those which are not registered, to the extent that the law of the country of origin acknowledges rights of that type. It is irrelevant, in that regard, whether or not the rights relating to the earlier mark apply in the European Union, since that provision does not contain any reference to the ‘territory’ concerned. Next, the Court stated that the principle that Article 8(3) of Regulation No 40/94 did not limit its scope to trade marks registered in a Member State or having effect in that State had already been upheld in the judgment Adamowski v OHIM – Fagumit (FAGUMIT), ( 6 ) relating to two applications for a declaration of invalidity. Lastly, the Court observed that the term ‘proprietor’ had to be interpreted by taking into account Article 6 septies of the Paris Convention, ( 7 ) relating to trade mark registrations made by an agent or representative of the proprietor without his or her authorisation, with the result that the proprietor of a trade mark which had been registered in one of the States party to that convention could also invoke the protection of Article 8(3) of Regulation No 40/94, if his or her agent or representative applied for registration of the mark in the European Union without his or her consent.

Secondly, the Court ruled on the condition relating to the existence of a contractual agency or representation agreement. In that regard, it pointed out that the attainment of the objective of preventing the misuse of the earlier mark by the agent or representative of the proprietor of that mark requires a broad interpretation of the concepts of ‘agent’ and ‘representative’, so that all forms of relationships based on a contractual agreement under which one of the parties represents the interests of the other, regardless of how the relationship is legally categorised, are covered. It is therefore sufficient that there is some agreement of commercial cooperation between the parties of a kind that gives rise to a ‘fiduciary’ relationship, by imposing on the trade mark applicant, whether expressly or implicitly, a general duty of trust and loyalty as regards the interests of the proprietor of the earlier mark.

The Court stated that, nevertheless, some kind of contractual agreement, whether written or not, entered into directly by the parties, and not through third parties, must exist. Consequently, the fact that an ‘implicit’ relationship may suffice means only that the decisive criterion for the application of Article 8(3) of Regulation No 40/94 is to be found in the existence and nature of a contractual agreement of commercial cooperation established in substance, and not in its formal classification. Furthermore, the existence of the contractual relationship cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence. Moreover, it is not necessary for the agreement between the parties still to be in force at the time when the trade mark application is filed, provided, however, that sufficient time has elapsed for there to be good reason to assume that the obligation of trust and confidentiality still existed at the time of that filing.

In the present case, given that the burden of proof regarding the existence of a contractual agency or representation relationship lay with the opponent, namely the proprietor of the earlier mark, it was for the applicant to prove that such a contractual agreement of commercial cooperation existed directly between the intervener and itself at the time when the mark applied for was filed. In the light of the foregoing considerations, the Court stated, first of all, that there was no formally concluded contractual agreement between the applicant (or its predecessor) and the intervener (or its predecessor). Next, it pointed out that the existence of commercial relations between the intervener and a third-party company was not capable of showing that the intervener had been the agent or representative of the applicant. Lastly, it took the view that the existence of an ‘implicit’ or ‘de facto’ commercial relationship between the applicant (or its predecessor) and the intervener (or its predecessor) was not supported by the evidence submitted by the applicant. Accordingly, no direct, even implicit or de facto, contractual agreement of commercial cooperation between the parties had been proved, with the result that no obligation of trust and loyalty on the part of the intervener (or its predecessor) towards the applicant (or its predecessor) had been established.

Consequently, the Court endorsed the Board of Appeal’s assessments that the applicant had not succeeded in proving the existence of a fiduciary contractual relationship between itself and the intervener, that it had not discharged the burden of proof which rested on it for the purposes of establishing the existence of a direct contractual agency or representation agreement and that it had therefore not proved that one of the cumulative conditions set out in Article 8(3) of Regulation No 40/94 was satisfied. Since the condition relating to the existence of a contractual agency or representation agreement had not been satisfied, the Court held that the Board of Appeal had not infringed Article 8(3) of Regulation No 40/94.

( 1 ) Goods in Class 33 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.

( 2 ) Based on Article 8(1)(a) and (b), (3) and (4) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), read in conjunction with Article 42 of that regulation.

( 3 ) Judgment of 11 December 2014, CEDC International v OHIM – Underberg (Shape of a blade of grass in a bottle) (T‑235/12, EU:T:2014:1058).

( 4 ) Judgment of 23 September 2020, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle) (T‑796/16, EU:T:2020:439).

( 5 ) Now Article 8(3) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

( 6 ) Judgment of 29 November 2012, Adamowski v OHIM – Fagumit (FAGUMIT) (T‑537/10 and T‑538/10, EU:T:2012:634, paragraph 19).

( 7 ) Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended.