2020 years 11 month 11 day, The European Court of Justice issued a ruling against MINERAL MAGIC Regulation of the case C-809/18 Number judgment, This is the first time the court has clarified "Eu trade mark regulation" The first 8 (3) Article provision——It is prohibited for agents or representatives to register trademarks in their own names without permission——Applicable conditions of.

　　The above provisions are derived from "Paris Convention for the Protection of Industrial Property" Article 6 (7) , norm (Having business relations with the foreign trademark owner) The agent is not authorized by the trademark owner, The act of applying for a foreign trademark in one's own name. That is, what is commonly referred to "Disloyal agency" behavior.

　　JOHN MILLS It's a British company, Apply for EU trademark registration "MINERAL MAGIC" , Be designated for use in "Nice classification" The first 3 commodity. Before a contested trademark application, JOHN MILLS The company has worked with American companies JEROME ALEXANDER CONSULTING A commodity distribution contract has been signed, Relates to sales attached "MAGIC MINERALS BY JEROME ALEXANDER" Branded goods. After learning the above information, American corporation "Eu trade mark regulation" The first 8 (3) Strip pair "MINERAL MAGIC" The trademark application is opposed, The reference is a registered trademark in the United States "MAGIC MINERALS BY JEROME ALEXANDER" (Designated control 3 Class goods) .

　　At the EU Intellectual Property Office objection process stage, The dispute in this case has been settled: Similar circumstances——The disputed application is not identical to the prior trademark, Their designated items of goods are also inconsistent (At least not exactly) , Whether applicable "Eu trade mark regulation" The first 8 (3) article?

　　Given that there is no double "consistent" situation——The trademark and the specified item are consistent, The objections Division of the European Intellectual Property Office ruled against the US company's application. however, In the subsequent appeals process, The first Appeal Committee of the European Intellectual Property Office came to the opposite conclusion, rejected "MINERAL MAGIC" Trademark application. Appeal board vs "Eu trade mark regulation" The first 8 (3) The article takes a broad interpretation, Holds that the same clause applies, Where the disputed trademarks are similar to each other or to the items of goods designated by them.

　　JOHN MILLS The company disagrees with the verdict, appeal. 2018 years 10 month 15 day, (European Union) The General Court declared No T-7/17 Number judgment. In judgment, Court vs "Eu trade mark regulation" The first 8 (3) prescribed "trademark" The concept is interpreted literally, It should be understood here as, Claim foreign mark (Prior trademark) The mark must be consistent with the disputed application, namely, identical. In addition, To support the above conclusion, The court referred to "Community trade marks Ordinance (The first 40/94 No) " Prepare documents during the drafting process. One of the documents makes it clear, The proposal made by a delegation was not adopted, The provision shall also apply "similar" Commercial use "similar" Trademark situation. The court held that, "Eu trade mark regulation" The first 8 (3) The provisions of this article are clear and unambiguous, No need to invoke, Other things "Paris Convention for the Protection of Industrial Property" Article 6 (7) , And other explanatory materials to clarify. Therefore, Court decision, Since the trademarks in question are not exactly the same, Constitute only similarity, Do not belong to "Eu trade mark regulation" The first 8 (3) The application of the clause.

　　however, The European Court of Justice said, For correct understanding and application "Eu trade mark regulation" The first 8 (3) article, Must consider "Paris Convention for the Protection of Industrial Property" The provisions of Article 6x7. Because the European Union is a member of the World Trade Organization, Be obliged to comply with "Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) " , And the pact requires its members to comply "Paris convention" Provisions of Articles 1 to 12.

　　After studying the background of the establishment of the relevant law, The European Court of Justice stated that, "Paris convention (French version) " Article 6 (7) Use "cette marque" This expression refers to the prior trademark, 1958 Lisbon text (This article is added to this conference) Is clearly stated in, Referred to in the clause "A trademark applied for registration by the agent or representative of the prior trademark owner" , Including the case where the trademark to be applied is similar in composition to the prior trademark.

　　Therefore, European court of justice, "Eu trade mark regulation" The first 8 (3) article (And its source clause—— "Paris convention" Article 6 (7) ) Not only applicable to "biconsistency" situation—— "Trademark consistency" and "commodity/Service item alignment" , In principle, It also applies to composition "similar" The situation of. For that matter (I find this argument persuasive) , The European Court of Justice made it clear, "If will "Eu trade mark regulation" The first 8 (3) Article understand as, The same applies only to disputed trademarks (And the goods specified for use/The service category is the same) The situation of, That would make people right "Eu trade mark regulation" The entire architecture is in doubt. Because it will lead to foreign trademark owners can not rely on 8 (3) article, The act of applying for the unauthorized registration of a mark similar to a prior trademark by its agent or representative, Raise an objection; And the agent or representative, But may be subject to the same regulation 8 (1) (b) Provision of article, On the ground that the prior foreign trademark owner's application for registration of the prior foreign trademark in the EU after the application of the agent or representative constitutes similar to its trademark application, Requesting rejection of the prior foreign trademark owner (European Union) Apply for" .

　　Based on the above analysis, The European Court of Justice agreed with the appellant's grounds of appeal, Find the circumstances of this case to be "Eu trade mark regulation" The first 8 (3) The normative category of the article, The disputed trademark application shall be rejected.

　　The significance of this decision is that, The conditions under which foreign trademark owners have the right to prohibit their agents or representatives from applying for trademark registration are clarified for the first time. In short, The trademark owner shall exercise the above rights, All of the following conditions should be met:

　　First of all, In countries with a trademark registration system, The right holder who can enforce the right must be in "Paris convention" ;

　　secondly, Before filing a contested trademark application, There is already a commercial relationship between the prior trademark owner and the disputing trademark applicant. For that matter, Have reached a consensus, here "agent" and "representative" Concepts should be interpreted broadly, That is, it also includes things like, The distributor in question, equicase;

　　Finally, It's the first time this case has been made clear, The rule does not only apply "biconsistency" situation——Trademarks and commodities/Service items are consistent; Between the trademarks and the specified goods/A similar situation exists between services, Equally applicable.

　　All of these conditions are met, Can be applied "Eu trade mark regulation" The first 8 (3) Bar sum "Paris convention" The provisions of Article 6x7, Unless an exception to this clause exists——The agent has a valid reason or has obtained the authorization of the corresponding foreign trademark owner (In my opinion, It must be expressly authorized) .