Judgment of the General Court (Second Chamber) 16 September 2026

JUDGMENT OF THE GENERAL COURT (Second Chamber)

16 September 2026 ( * )

( EU trade mark – Proceedings for the assignment of the EU trade mark – EU figurative mark SUPERIOR MANUFACTURING – Article 53(1)(b) of Regulation (EC) No 207/2009 – Article 8(3) of Regulation No 207/2009 – Concept of ‘agent or representative’ – Rejection of the request for assignment – Obligation to state reasons – Article 94(1) of Regulation (EU) 2017/1001 )

In Case T‑566/25,

Worldwide Machinery Ltd, established in Channelview, Texas (United States), represented by B. Woltering, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Hanf, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Scaip SpA, established in Parma (Italy), represented by A. Guareschi, lawyer

THE GENERAL COURT (Second Chamber),

composed of N. Półtorak, President, G. Steinfatt (Rapporteur) and I. Dimitrakopoulos, Judges,

Registrar: V. Di Bucci,

having regard to the written part of the procedure,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

1 By its action under Article 263 TFEU, the applicant, Worldwide Machinery Ltd, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 June 2025 (Case R 1270/2024-2) (‘the contested decision’).

Background to the dispute

2 The collaboration between, on the one hand, Worldwide Machinery, Inc., the predecessor in title to the applicant, and, on the other, Scaip Srl, the predecessor in title to the intervener, Scaip SpA, dates back to 1996. In the context of that collaboration, the parties entered into agreements in 1996, 2007 and 2013. Their business relationship consisted essentially in the former selling heavy construction machinery and equipment manufactured by the latter.

3 On 29 November 2012, Scaip Srl filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended.

4 The trade mark for which registration was sought is the following figurative sign:

5 The goods in respect of which the trade mark is registered are in Class 12 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, and correspond to the following description: ‘Self-propelled machines for creating oil pipelines, gas and water conduits; land vehicles, namely self-propelled equipment for placing pipes; kits for converting crawler land vehicles to land vehicles comprising self-propelled equipment for placing pipes; sifting buckets; suction cups for lifter; hydraulic chucks; self-propelled pipe bending machines’.

6 On 19 October 2018, the applicant filed with EUIPO a request that the contested mark be assigned to it and an application for a declaration of invalidity of that mark. The grounds relied on in support of the request for assignment to it were those set out in Article 60(1)(b) 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), read in conjunction with Article 8(3) of that regulation. The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 59(1)(b) and Article 60(2)(c) of Regulation 2017/1001.

7 The request for assignment was based on an identical non-registered figurative mark in Australia, Belgium, France, Germany, the Netherlands, Spain, the United Kingdom and the United States.

8 On 23 April 2024, the Cancellation Division upheld the applicant’s request for assignment on the ground that the applicant was the proprietor of an earlier non-registered mark in the United States, the intervener was the applicant’s agent or representative and the intervener had applied for the trade mark in its own name and without the applicant’s consent. As regards the fiduciary relationship between the parties, the Cancellation Division considered that the finding of such a relationship was apparent from the distribution agreements entered into in 1996, 2007 and 2013. None of the agreements refers to the intervener as the proprietor of the contested mark, the intervener did not adduce evidence to demonstrate that it was using the trade mark independently of the applicant and the intervener did not show that Article 8 of the 2007 agreement covered the contested mark. For that reason, the Cancellation Division found that there was no need to examine the grounds put forward in support of the application for a declaration of invalidity.

9 On 22 June 2025, the intervener filed a notice of appeal with EUIPO against the Cancellation Division’s decision.

10 By the contested decision, the Board of Appeal upheld the appeal on the ground that, first, it was not clear from the wording of the 2007 agreement that it applied to the contested mark or only to other trade marks. Second, even if the 2007 agreement could be regarded as covering the contested mark, under that agreement, the intervener could not be classified as the applicant’s agent or representative, but rather, conversely, the applicant was the intervener’s representative. Third, the applicant had not proved that it was the proprietor of an earlier non-registered mark in the United States or Australia, since the legal reports provided in that regard were commissioned by the applicant and were therefore only of limited probative value. For those reasons, the Board of Appeal found that the conditions laid down in Article 60(1)(b) and Article 21(1) and (2)(a) of Regulation 2017/1001 had not been satisfied and referred the case back to the Cancellation Division for further proceedings concerning the application for a declaration of invalidity based on Article 59(1)(b) and Article 60(1)(b) of Regulation 2017/1001.

Forms of order sought

11 The applicant claims that the Court should:

– annul the contested decision in its entirety and award the assignment of the contested mark to it;

– order the reimbursement of its costs in the proceedings before the Court.

12 EUIPO contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs incurred by EUIPO in case an oral hearing is convened.

13 The intervener submits that the Court should:

– reject the application as unfounded;

– order the applicant to pay the intervener’s costs in all the stages of the proceedings.

Law

14 In view of the date on which the application for registration of the contested mark was filed, namely 29 November 2012, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009. Furthermore, according to settled case-law, procedural rules are generally deemed to apply on the date on which they enter into force (see order of 19 February 2025, QX World v EUIPO – Mandelay (EDUCTOR) , T‑102/24, not published, EU:T:2025:170, paragraph 18 and the case-law cited).

15 Consequently, in the present case, first, as regards the substantive rules, the references made in the contested decision and by the parties in their written pleadings to the provisions of Regulation 2017/1001 must be understood as referring to the provisions of Regulation No 207/2009. Second, with regard to the procedural rules, the dispute is governed by the provisions of Regulation 2017/1001 (order of 19 February 2025, EDUCTOR , T‑102/24, not published, EU:T:2025:170, paragraphs 19 and 20).

16 The applicant relies on two pleas in law, alleging, first, infringement of Article 53(1)(b) of Regulation No 207/2009, read in conjunction with Article 18 and Article 8(3) of that regulation and with Article 95(1) of Regulation 2017/1001, and, second, infringement of Article 94(1) of Regulation 2017/1001.

The first plea in law

17 The first plea in law is divided into four parts, alleging, first, that the Board of Appeal failed to have regard to the fact that the concept of ‘agent or representative’ must be interpreted broadly; second, that the Board of Appeal erred in finding that there was no ‘relationship giving rise to fiduciary duties’; third, that the Board of Appeal erred in not establishing that the applicant could rely on earlier rights; and, fourth, that the Board of Appeal applied an incorrect standard when assessing the opinion of a United States lawyer and the opinion of an Australian lawyer.

The first and second parts of the first plea in law

18 In so far as the first and second parts of the first plea in law both concern the existence of a fiduciary relationship between the applicant and the intervener for the purposes of Article 8(3) of Regulation No 207/2009, they should be examined together.

19 The applicant claims that the Board of Appeal erred in law in finding that, for the purposes of Article 8(3) of Regulation No 207/2009, a classic ‘agent’ or ‘representative’ relationship was necessary, in the sense that one party had to represent the other vis-à-vis third parties. However, an agreement of commercial cooperation 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 trade mark proprietor is sufficient. In that regard, it is also apparent from the Guidelines for examination of European Union trade marks published by EUIPO that the manufacture of goods or cooperation in advertising efforts to optimise marketing also point to the existence of a commercial relationship for the purposes of Article 8(3) of Regulation No 207/2009.

20 In the present case, contrary to the designation as ‘distribution agreements’, the agreements concluded between the applicant and the intervener should be classified as manufacturing agreements, under which the intervener acted as a white-label manufacturer and was required to affix the applicant’s trade mark to the goods. The 2007 agreement clearly indicates that the parties cooperated closely, exceeding a mere purchaser-seller relationship. Since the intervener has the means and knowledge to produce the goods at issue, that contractual relationship entails a general duty of trust and loyalty as regards the applicant’s interests.

21 The Board of Appeal failed to have regard to that relationship by relying only on the 2007 agreement and by misinterpreting it. First, the Board of Appeal could not rely solely on the 2007 agreement whilst disregarding the 2013 agreement. Second, the clauses relating to trade marks and Article 14 of the 2007 agreement do not apply to the contested mark. The trade mark clause is a standard general clause which did not relate to the contested mark, as the mark did not yet exist at the time when the agreement was entered into. On the contrary, the fact that the 2013 agreement contains no clause relating to the intervener’s trade marks shows conclusively that the contested mark does not belong to the intervener. Article 14 of the 2007 agreement contains only standard clauses with no legal effect, since the intervener acted as a white-label manufacturer. Third, the Board of Appeal incorrectly disregarded aspects other than written agreements, such as aspects relating to the creation and ownership of the contested mark.

22 EUIPO and the intervener dispute the applicant’s arguments.

23 Under Article 53(1)(b) of Regulation No 207/2009, a Community trade mark is to be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where there is a trade mark as referred to in Article 8(3) of that regulation and the conditions set out in that paragraph are fulfilled. Under Article 8(3) of Regulation No 207/2009, upon opposition by the proprietor of the trade mark, a trade mark is not to be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his or her own name without the proprietor’s consent, unless the agent or representative justifies his or her action.

24 It is apparent from the wording of Article 53(1)(b) of Regulation No 207/2009, read in conjunction with Article 8(3) of that regulation, that, for an application for a declaration of invalidity to succeed on that basis, it is necessary, first, for the applicant for a declaration of invalidity to be the proprietor of the earlier mark; second, for the proprietor of the contested mark to be or to have been the agent or representative of the applicant for a declaration of invalidity; third, for the application for registration to have been filed in the name of the agent or representative without the consent of the applicant for a declaration of invalidity and without there being legitimate reasons to justify the agent’s or representative’s action; and, fourth, for the application to relate in essence to identical or similar signs and goods. Those conditions are cumulative (see judgment of 14 February 2019, Mouldpro v EUIPO – Wenz Kunststoff (MOULDPRO) , T‑796/17, not published, EU:T:2019:88, paragraph 21 and the case-law cited).

25 It is apparent from the case-law that the objective of Article 8(3) of Regulation No 207/2009 is to prevent the misuse of the earlier mark by the agent or representative of the proprietor of that mark, as those persons may exploit the knowledge and experience acquired during their business relationship with the proprietor and may therefore improperly benefit from the effort and investment which the proprietor him or herself has made (judgment of 11 November 2020, EUIPO v John Mills , C‑809/18 P, EU:C:2020:902, paragraph 83).

26 The terms ‘agent’ and ‘representative’ as used in Article 8(3) of Regulation No 207/2009 must be interpreted broadly, so as to cover all kinds of relationships based on a contractual arrangement under which one party is representing the interests of the other, regardless of how the contractual relationship between the parties is classified. For the purposes of Article 8(3) of Regulation No 207/2009, it is sufficient that there be 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 trade mark proprietor. Nevertheless, some kind of agreement must exist between the parties. If the applicant acts completely independently, without having entered into any kind of relationship with the proprietor, he or she cannot be treated as an agent for the purposes of Article 8(3) of that regulation. Thus, a mere purchaser or client of the proprietor cannot be regarded as an ‘agent’ or as a ‘representative’ for the purposes of Article 8(3) of that regulation, since such persons are under no special obligation of trust to the trade mark proprietor (see judgment of 14 February 2019, MOULDPRO , T‑796/17, not published, EU:T:2019:88, paragraphs 23 and 24 and the case-law cited).

27 The existence of such a contractual relationship cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence (see judgment of 28 June 2023, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle) , T‑145/22, EU:T:2023:365, paragraph 53 and the case-law cited). From a procedural point of view, the burden of proof regarding the existence of a contractual agency or representation relationship lies with the applicant (see, to that effect, judgment of 14 February 2019, MOULDPRO , T‑796/17, not published, EU:T:2019:88, paragraph 30).

28 It follows from the case-law that obligations of trust and loyalty do not lapse immediately after the contractual relationship has ended, rather post-contractual obligations apply for a reasonable transition period after the termination of the agreement, during which the parties may redefine their commercial strategies (judgment of 28 June 2023, Shape of a blade of grass in a bottle , T‑145/22, EU:T:2023:365, paragraph 73).

29 In the present case, the Board of Appeal found that the agreement most likely to have been applicable at the time when the application for registration of the contested mark was filed was the 2007 agreement. It noted that, first, in accordance with Article 12 thereof, the 2007 agreement expired on 15 November 2012 and was therefore no longer in force at the time when the application for registration of the contested mark was filed. However, the 2013 agreement did not enter into force until 1 January 2013. Although this is not clearly stated in the contested decision, the Board of Appeal nevertheless considered that, despite the absence of any legally binding agreement on the date on which the application for registration of the contested mark was filed, it could be assumed that the parties had a business relationship between 16 November and 31 December 2012. It therefore found that the 2007 agreement should serve as a reference for assessing the nature of the relationship between the parties on the date on which the application for registration of the contested mark was filed, namely 29 November 2012. Second, the Board of Appeal considered that the agreement did not refer explicitly to the contested mark. For that reason, it cannot be inferred from the provisions of the 2007 agreement whether that agreement applies to the contested mark or only to different trade marks. Third, the Board of Appeal found that, in the light of the provisions of the agreement, the intervener could not be regarded as the applicant’s representative or agent, rather the applicant was the intervener’s representative, and that the applicant had not adduced any other evidence capable of demonstrating that the intervener was its representative or agent in such a way as to be bound by a fiduciary obligation.

30 That assessment is not called into question by the applicant’s arguments.

31 In the first place, as regards the argument that the Board of Appeal failed to take into account that the concept of ‘agent or representative’ must be interpreted broadly, it is clear from paragraphs 40 to 48 of the contested decision that the Board of Appeal referred to the relevant case-law of the Court of Justice in that regard and applied it correctly. In paragraph 40 of the contested decision, the Board of Appeal recalled the objective of Article 8(3) of Regulation No 207/2009, in accordance with the case-law cited in paragraph 25 above. In accordance with the case-law cited in paragraph 26 above, the Board of Appeal stated in paragraph 41 of the contested decision without erring in law that the terms ‘principal’ and ‘agent’ must be interpreted in such a way as to cover all forms of relationship based on a contractual agreement under which one of the parties represents the interests of the other, with the result that it is sufficient, for the purposes of the application of that provision, that 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. It follows that the applicant’s argument that the Board of Appeal erred in law in adopting an incorrect interpretation of the conditions of Article 8(3) of Regulation No 207/2009 must be rejected.

32 In the second place, the argument that the Board of Appeal failed to take into account that the intervener acted as a white-label manufacturer and was, for that reason, bound by a fiduciary obligation cannot succeed. The applicant has not adduced any evidence to support the conclusion that, alongside the 1996, 2007 and 2013 agreements, there was a white-label manufacturing agreement. In that regard, the Board of Appeal correctly found that those written agreements constituted the only relevant evidence concerning the relationship between the parties. It follows that the applicant’s assertion that the intervener was merely a white-label manufacturer of the goods is not supported by any evidence in the file.

33 In the third place, as regards the argument that the Board of Appeal erred in finding that the applicant had not demonstrated that the intervener acted as the applicant’s agent, with the applicant acting as principal, it should be noted, first, that, in order to examine the contractual relationship between the applicant and the intervener, all relevant factors must be taken into account. For that reason, the applicant correctly submits that the parties’ relationship at the time when the application for registration of the mark was filed, on 29 November 2012, should not have been analysed solely on the basis of the 2007 agreement which ended on 15 November 2012, but that account should also have been taken of how the parties’ relationship had evolved in the context of the 2013 agreement, which was under negotiation at the end of 2012. As regards the 2007 agreement, it follows from the case-law cited in paragraph 28 above that it is not necessary for the agreement between the parties still to be in force at the time when the application for registration of the mark was filed. Since the application was filed on 29 November 2012, approximately two weeks after the agreement came to an end, post-contractual obligations existed at that time. As regards the 2013 agreement, although it was not formalised until June 2013, it appears that, at the end of 2012, the applicant and the intervener were already involved in a process of negotiating their future business relationship. For that reason, as the applicant submits, the 2013 agreement was also a factor to be taken into consideration.

34 However, in accordance with the case-law cited in paragraph 27 above, it was for the applicant to prove that the 2007 agreement or the 2013 agreement established between the parties an agent-principal relationship giving rise to fiduciary obligations for the purposes of Article 8(3) of Regulation No 207/2009.

35 Those agreements, entitled ‘distributorship agreement’ and ‘distributorship contract’, provide in Article 1 that the intervener is to grant the applicant the exclusive right to sell certain products in certain territories.

36 Next, the agreements set out the applicant’s contractual obligations under which it was obliged to promote the products using sales aids, brochures and technical specification sheets supplied by the intervener (Article 3.1 and 3.2 of the 2007 agreement and Article 2.2 and 2.5 of the 2013 agreement), to sell the products (Article 3.1 of the 2007 agreement and Article 2.1 of the 2013 agreement) and to meet a minimum sales volume (Article 5 of the 2007 agreement and Article 4 of the 2013 agreement), to not enter into competition with products supplied by the intervener (Article 6.1 of the 2007 agreement and Article 3 of the 2013 agreement) and to notify the intervener of any new regulations affecting the performance of the contractual obligations (Article 6.5 of the 2007 agreement and Article 2.3 of the 2013 agreement). After the end of the contract, the applicant was required to return the manuals, papers, price lists, bulletins and other data pertaining to the products to the intervener (Article 14.1 of the 2007 agreement and Article 10.1 of the 2013 agreement). Finally, Article 8 of the 2007 agreement imposes obligations on the applicant in order to protect some of the intervener’s trade marks.

37 By contrast, the intervener undertook to provide the applicant with training relating to the installation, operation or maintenance of the products (Article 7.1 of the 2007 agreement). It also undertook to provide a warranty on the products to end purchasers (Article 10.1 of the 2007 agreement and Article 7 of the 2013 agreement) in accordance with the general conditions of warranty.

38 However, neither the 2007 agreement nor the 2013 agreement expressly contains a provision imposing on the intervener a general duty of trust and loyalty with regard to the applicant’s interests. It follows that an explicit fiduciary obligation on the part of the intervener towards the applicant is not part of those agreements.

39 Lastly, it has not been established that such a fiduciary obligation arises implicitly from the contractual relationship between the applicant and the intervener.

40 First, such a fiduciary obligation does not follow from the fact that the 2013 agreement, unlike the 2007 agreement, does not contain a clause relating to trade marks. That change in the contractual relationship between the applicant and the intervener, resulting from the removal, in the 2013 agreement, of the obligations to protect the intervener’s trade marks and to transfer rights to trade marks acquired in the performance of the agreement, which were included in the 2007 agreement, is not such as to demonstrate that the contested mark did not belong to the intervener or, more generally, that the purpose of the 2013 agreement was to create obligations of trust or confidentiality on the part of the intervener towards the applicant.

41 Second, as is apparent from the Board of Appeal’s findings in paragraphs 46 and 47 of the contested decision, the contractual provisions of the 2007 agreement ‘seem to indicate that it is the [applicant] who had been entrusted to “act on behalf of” the [intervener], rather than the other way round’. In that regard, the Board of Appeal correctly noted that, first, the intervener granted the applicant the exclusive right to sell certain products in certain territories; second, the applicant undertook to meet a minimum sales volume; third, only the applicant was bound by a non-compete obligation; and, fourth, the applicant is not in any way the legal representative of the intervener and cannot assume any obligation of any kind, implied or expressed, on behalf of the intervener. Consequently, while it is true that the applicant and the intervener cooperated under the 2007 and 2013 agreements in order to achieve a common objective, that cooperation did not mean, however, that the intervener was bound by a fiduciary obligation vis-à-vis the applicant.

42 That interpretation of the 2007 agreement is supported by the contractual provision relating to trade marks (Article 8 of the 2007 agreement). Under that provision, only the applicant was required to cooperate to the fullest extent possible with the intervener to take such action as the intervener considered necessary to protect the trade marks of the intervener or other manufacturers of products supplied by the intervener to the applicant, used currently or in the future in connection with the products covered by the agreement. Moreover, that provision provided that, upon the expiry or termination of the agreement, the applicant was required to take all action necessary to transfer and assign to the intervener or its agent any right, title or interest relating to the intervener’s trade marks which the applicant may have acquired in any manner as a result of the handling and assistance in the distribution of any of the products covered by the agreement. Furthermore, the applicant was required to cease using any of the intervener’s trade marks without specific written authorisation.

43 It follows from those factors that the Board of Appeal was correct to conclude, in paragraphs 48 and 66 of the contested decision, that the applicant had not established that, at the time of filing the application for registration of the contested mark, there existed between the applicant and the intervener an agent-principal relationship giving rise to fiduciary obligations for the purposes of Article 8(3) of Regulation No 207/2009, in the context of which the intervener acted as the applicant’s agent, with the applicant acting as principal.

44 In the fourth place, as regards the alleged infringement of Article 95(1) of Regulation 2017/1001, the applicant has not substantiated the reasons why it claims that the Board of Appeal infringed that provision.

45 It follows that the first part of the first plea in law, alleging that the concept of ‘agent or representative’ must be interpreted broadly, and the second part of the first plea in law, alleging that the Board of Appeal erred in finding that there was no ‘relationship giving rise to fiduciary obligations’, must be rejected.

The third and fourth parts of the first plea in law

46 In so far as the third and fourth parts of the first plea in law both concern the existence of an earlier trade mark for the purposes of Article 8(3) of Regulation No 207/2009, they should be examined together.

47 The applicant alleges that the Board of Appeal erred in law in finding that the applicant could not rely on earlier (non-registered) American and Australian rights to the trade mark.

48 As regards the right under US law, the applicant submits that, in finding that the opinion of a US law firm concerning non-registered trade mark rights in the United States is not impartial and objective, the Board of Appeal distorted that opinion. The production of a legal opinion of a local lawyer is the only possible means of proving the existence of an earlier right. In that regard, the person providing the opinion needs to know the purpose of that opinion. The Board of Appeal’s finding that the applicant instructed the law firm to reach conclusions which support the desired outcome of the proceedings is highly speculative. Moreover, by referring to case-law concerning affidavits of parties, the Board of Appeal applied an incorrect standard when assessing the legal opinion. For those reasons, according to the applicant, the content of the legal opinion should be regarded as sound evidence. The fact that that opinion does not mention the agreements which existed between the applicant and the intervener can be explained by the fact that the contested mark belonged to the applicant and the agreements did not relate to that trade mark.

49 In addition, the applicant submits that the Board of Appeal erred in finding that the content of that opinion was insufficient to prove the existence of earlier rights. It should have concluded that the evidence submitted gave sufficient insight into the national legislation relied on and that, moreover, that evidence supported the conclusion that the applicant could rely, under US law, on earlier rights to a non-registered trade mark.

50 Lastly, according to the applicant, the Board of Appeal disregarded arguments put forward by the applicant. It did not take into account the fact that the United States Patent and Trademark Office had accepted the declarations of use of the ‘Superior’ trade marks in the United States, the respective declarations made by its president before the United States Patent and Trademark Office, or the aspects relating to the creation of the logo.

51 As regards Australian law, the applicant submits that the Board of Appeal incorrectly rejected the legal opinion of an Australian law firm on the ground that it was not reliable, relying on the same objections it raised against the US legal opinion. In addition, it disregarded the final decision of the Australian intellectual property office, by which that office decided that the applicant could rely on earlier trade mark rights under Australian law.

52 EUIPO and the intervener dispute the applicant’s arguments.

53 In paragraphs 54 to 60 and 65 of the contested decision, the Board of Appeal considered that, while the law firms are not employees of the applicant and therefore do not fall directly within its sphere of influence, they cannot be regarded as a completely independent source either, since the legal opinions were commissioned and paid for by the applicant for a declared purpose. For that reason, the Board of Appeal found that those legal opinions did not sufficiently demonstrate that the applicant was the proprietor of an earlier trade mark in the United States and Australia. Moreover, the Board of Appeal found it surprising that the legal opinions made no mention of the contractual agreements concluded between the parties. That omission diminishes the overall credibility of those pieces of evidence. Finally, as regards the legal opinion on US law, the Board of Appeal considered that the evidence cited by that legal opinion was rather scarce and did not allow for confirmation of the content, conditions of application and scope of US law.

54 According to settled case-law, in order to assess the evidential value of a document, it is necessary to verify the likelihood and the accuracy of the information which that document contains. Account must be taken, inter alia, of the origin of the document, the circumstances in which it came into being, the person to whom it was addressed and of whether it seems from the content to be sound and reliable (see judgment of 16 December 2020, Forbo Financial Services v EUIPO – Windmöller (Canoleum) , T‑3/20, EU:T:2020:606, paragraph 51 and the case-law cited).

55 In the present case, it must be borne in mind, first, that at issue are legal opinions drawn up by a lawyer (see, in that regard, judgment of 9 April 2014, MHCS v OHIM – Ambra (DORATO) , T‑249/13, not published, EU:T:2014:193, paragraph 55). Such a legal opinion reflects the assessment of a single lawyer regarding a legal matter.

56 Those legal opinions were not drawn up by a person who was independent of the applicant. As the Board of Appeal stated in paragraph 55 of the contested decision, the legal opinions were commissioned by representatives of the applicant. Moreover, the opinion on US law begins with the expression ‘our client’, which demonstrates that the US firm was acting as legal counsel for the applicant.

57 As regards the content of the legal opinion, it should be pointed out, as the Board of Appeal did in paragraphs 58 and 59 of the contested decision, that the opinion concerning US law cites very little relevant evidence. Moreover, the case-law and legal doctrines referred to in that opinion are not accompanied by a sufficiently detailed explanation, especially since the applicable law is that of a jurisdiction outside the European Union. Lastly, neither of the two legal opinions examines the question of whether the applicant was the proprietor of an earlier non-registered trade mark in the light of the contractual agreements between the applicant and the intervener, which are an important factor in assessing that question. For that reason, the legal opinions contain a shortcoming which prevents them from being regarded as solid evidence of the information provided therein.

58 In the light of the foregoing, the applicant cannot criticise the Board of Appeal for having erred in finding that the legal opinions were not capable of demonstrating to the requisite legal standard that the applicant was the proprietor of an earlier trade mark for the purposes of Article 8(3) of Regulation No 207/2009.

59 Consequently, the Board of Appeal was entitled to find, in paragraph 66 of the contested decision, that the applicant had not sufficiently demonstrated that it was the proprietor of an earlier trade mark for the purposes of Article 8(3) of Regulation No 207/2009.

60 It follows that the third and fourth parts of the first plea in law must be rejected.

The second plea in law, alleging that the statement of reasons in the contested decision is insufficient

61 By the second plea in law, the applicant submits, in essence, that the Board of Appeal infringed Article 94(1) of Regulation 2017/1001 by incorrectly examining the facts and evidence, by giving insufficient reasons and by disregarding arguments. Specifically, the applicant complains that the Board of Appeal incorrectly took the 2007 agreement as the basis for its interpretation and drew an incorrect conclusion on the basis of passages from that agreement. Moreover, the Board of Appeal disregarded aspects relating to the creation and ownership of the contested EU trade mark and erred in its assessment and in its reasoning in stating that the applicant could not rely on an earlier non-registered right in the United States and Australia.

62 EUIPO disputes the applicant’s arguments.

63 According to Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based.

64 The obligation to state reasons, as thus laid down, has the same scope as that which derives from Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the competent court to exercise its power of review. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see, to that effect, judgments of 21 October 2004, KWS Saat v OHIM , C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65; and of 13 June 2019, MPM-Quality v EUIPO – Elton Hodinářská (MANUFACTURE PRIM 1949) , T‑75/18, not published, EU:T:2019:413, paragraph 25 and the case-law cited).

65 In that regard, the Board of Appeal is not obliged to express a view on every argument submitted by the parties. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision (see, to that effect, judgments of 9 December 2010, Tresplain Investments v OHIM – Hoo Hing (Golden Elephant Brand) , T‑303/08, EU:T:2010:505, paragraph 46 and the case-law cited, and of 29 November 2016, Chic Investments v EUIPO (eSMOKING WORLD) , T‑617/15, not published, EU:T:2016:679, paragraph 102 and the case-law cited).

66 Moreover, a distinction must be drawn between the review of compliance with the obligation to state the reasons for a decision subject to review by the Courts of the European Union, which goes to an issue of infringement of essential procedural requirements and concerns the question whether the decision discloses in a clear and unequivocal fashion the reasoning followed by the institution which adopted it, and the review of the merits of that decision, which is concerned with infringement of the applicable rules of law (see, to that effect, judgments of 2 April 1998, Commission v Sytraval and Brink’s France , C‑367/95 P, EU:C:1998:154, paragraphs 63 and 67, and of 22 September 2016, Pensa Pharma v EUIPO , C‑442/15 P, not published, EU:C:2016:720, paragraph 35 and the case-law cited).

67 In the present case, the findings of the Board of Appeal specifically relating to the examination of the applicable contractual relationship between the applicant and the intervener are set out in paragraphs 28 to 51 of the contested decision. In those paragraphs, the Board of Appeal interpreted the 2007 agreement and set out the reasons why a fiduciary obligation on the part of the intervener was not established. In paragraphs 52 to 65 of the contested decision, it then set out the reasons why the applicant could not rely on an earlier non-registered right in the United States and Australia by examining the probative value of the respective legal reports. Those findings in the contested decision are sufficient to understand the reasons why the Board of Appeal considered that neither a fiduciary relationship nor an earlier non-registered right in the United States or Australia had been established.

68 All of those findings, which take account of all the evidence submitted by the parties, are such as to enable the General Court to review the merits of the contested decision and to enable the applicant to challenge its lawfulness. Consequently, the contested decision complies with Article 94(1) of Regulation 2017/1001. It follows that the second plea in law, alleging a failure to state reasons, must be rejected.

69 In the light of all the foregoing considerations, since neither of the pleas relied on by the applicant can be upheld, the action must be dismissed in its entirety.

Costs

70 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

71 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the intervener. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, in the absence of a hearing, be ordered to bear its own costs.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1. Dismisses the action;

2. Orders Worldwide Machinery Ltd to bear its own costs and to pay those incurred by Scaip SpA;

3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.

Delivered in open court in Luxembourg on 16 September 2026.

* Language of the case: English.