Trade mark guidelines, Part C Opposition, Section 3 Unauthorised filing by agents of the TM proprietor (Article 8(3) EUTMR)

Part C Opposition Section 3

1 Preliminary Remarks

According to Article 8(3) EUTMR, upon opposition by the proprietor of an earlier trade mark, a trade mark will 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, unless the agent or representative justifies his action.

Article 8(3) EUTMR has its origin in Article 6septies of the Paris Convention (PC), which was introduced into the convention by the Revision Conference of Lisbon in 1958. The protection it affords to trade mark proprietors consists of the right to prevent, cancel, or claim as their own unauthorised registrations of their marks by their agents or representatives, and to prohibit use thereof, where the agent or representative cannot justify its acts. Article 6septies PC reads as follows: (1) If the agent or representative of the person who is the proprietor of the mark in one of the countries of the Union applies, without such proprietor’s authorization, for the registration of the mark in his own name, in one or more countries of the Union, the proprietor shall be entitled to oppose the registration applied for, or demand its cancellation or, if the law of the country so allows, the assignment in his favour of the said registration, unless such agent or representative justifies his action. (2) The proprietor of the mark shall, subject to the provisions of paragraph (1), above, be entitled to oppose the use of his mark by his agent or representative if he has not authorized such use. (3) Domestic legislation may provide an equitable time limit within which the proprietor of a mark must exercise the rights provided for in this Article. Article 8(3) EUTMR implements this provision only to the extent it gives the rightful proprietor the right to oppose applications filed without its authorisation. The other elements of Article 6septies PC are implemented by Articles 13, 21 and Article 60(1)(b) EUTMR. Article 60(1)(b) EUTMR gives the proprietor the right to cancel unauthorised registrations, whereas Articles 13 and 21 EUTMR enable the proprietor to prohibit the use thereof and/or to request the transfer of the registration to its own name. Since Article 46 EUTMR provides that an opposition may only be based on the grounds provided for in Article 8 EUTMR, the additional rights conferred on the proprietor by the above provisions may not be invoked in opposition proceedings. Hence, any request by the opponent, either for the prohibition of use of the agent’s mark, or for an assignment of the application to itself, will be dismissed as inadmissible. In view of the specific subject matter for protection under Article 8(3) EUTMR, while the use or lack of use made of the earlier rights may have a bearing on arguments regarding the justification for applying for the EUTM, the opponent cannot be obliged

to provide proof of use under Article 47(3) EUTMR for any earlier rights thereby relied upon (see the Guidelines, Part C, Opposition, Section 7, Proof of use, paragraph 1.2). This practice of the Office is also justified by the fact that Article 47(2) and (3) EUTMR refer to the ‘earlier mark’ in the meaning of Article 8(2) EUTMR, which does not apply to Article 8(3) EUTMR.

The unauthorised filing of a proprietor’s trade mark by its agent or representative is contrary to the general obligation of trust underlying commercial cooperation agreements of this type. Such a misappropriation of the proprietor’s mark is particularly harmful to its commercial interests, as the applicant may exploit the knowledge and experience acquired during its business relationship with the proprietor and, thus, improperly benefit from the proprietor’s effort and investment (11/11/2020, C‑809/18 P, MINERAL MAGIC, EU:C:2020:902, § 72). Therefore, the purpose of Article 8(3) EUTMR is to safeguard the legitimate interests of trade mark proprietors against the arbitrary appropriation of their trade marks, by granting them the right to prohibit registrations by agents or representatives that are applied for without their consent. Article 8(3) EUTMR is a manifestation of the principle that commercial transactions must be conducted in good faith. Article 59(1)(b) EUTMR, which allows for the declaration of invalidity of an EUTM on the ground that the applicant was acting in bad faith, is the general expression of this principle. In some respects, the protection granted by Article 8(3) EUTMR is narrower than that afforded by Article 59(1)(b) EUTMR, because the applicability of Article 8(3) EUTMR is subject to the fulfilment of a number of additional conditions laid down in this provision. On the other hand, the protection could be seen as broader in other ways because Article 8(3) EUTMR might apply where an agent’s behaviour would not qualify as ‘bad faith’, for example, the agent acted on the incorrect but genuinely held assumption that it had consent to apply for the mark.

2 Entitlement of the Opponent

According to Article 46(1)(b) EUTMR, the right to file an opposition on the grounds of Article 8(3) EUTMR is reserved only for the proprietors of earlier trade marks. This is in contrast both to Article 46(1)(a) EUTMR, which stipulates that oppositions based on Articles 8(1) or (5) EUTMR may also be filed by authorised licensees, and to Article 46(1)(c) EUTMR, which stipulates that for oppositions based on Article 8(4) EUTMR, the right to file an opposition is also extended to persons authorised by national law to exercise the relevant rights. It follows that since the right to oppose an EUTM application on the grounds of Article 8(3) EUTMR belongs exclusively to the proprietors of earlier trade marks,

oppositions filed in the name of third persons, be they licensees or otherwise authorised by the relevant national laws, will be dismissed as inadmissible due to lack of entitlement.

Likewise, if the opponent fails to prove that it was the rightful proprietor of the mark when the opposition was filed, the opposition will be dismissed without any examination of its merits due to lack of substantiation. The evidence required in each case will depend on the kind of right relied upon. The current proprietor may also invoke the rights of its predecessor in title if the agency/representation agreement was concluded between the previous proprietor and the applicant, but this needs to be duly substantiated by evidence.

3 Scope of Application

3.1 Kinds of mark covered

Article 8(3) EUTMR applies to earlier ‘trade marks’ that have been applied for as EUTMs without their proprietor’s consent. However, Article 8(2) EUTMR does not apply to oppositions based on this ground, as it only enumerates the kinds of earlier rights on which an opposition may be entered under paragraphs (1) and (5) of the same article. Therefore, the kinds of rights on which an opposition based on Article 8(3) EUTMR may be entered needs to be determined in more detail, both as regards their nature and their geographical origin. In the absence of any restriction in Article 8(3) EUTMR and in view of the need to provide the legitimate interests of the real proprietor with effective protection, the term ‘trade marks’ should be interpreted broadly and must be understood as including

pending applications, since there is nothing in this provision restricting its scope exclusively to registered trade marks. For the same reasons, unregistered marks or well-known marks within the meaning of Article 6bis PC also fall within the term ‘trade marks’ within the sense of Article 8(3) EUTMR. Consequently, both registered and unregistered trade marks are covered by this provision, to the extent that the law of the country of origin recognises rights of the latter kind (08/08/2021, T-84/20, Eductor / Eductor, EU:T2021:555, § 38). In contrast, the express reference to ‘trade marks’ means that Article 8(3) EUTMR does not apply to mere signs used in the course of trade, other than unregistered trade marks. Likewise, other kinds of intellectual property rights that could be used as a basis for an invalidity action cannot be invoked in the context of Article 8(3) EUTMR either.

It is clear from the wording of Article 8(3) EUTMR that the trade mark on which the opposition is based must be earlier than the EUTM application. Hence, the relevant point in time that should be taken into account is the filing or priority date of the contested application. The rules according to which the priority should be determined depend on the kind of trade mark relied upon. If the earlier mark has been acquired by registration, it is its filing or priority date that should be taken into account for assessing whether it precedes the contested EUTM application, whereas if it is a use-based right, the relevant conditions for protection through use must have been fulfilled before the filing date (or if appropriate, the priority date) of the contested EUTM application. In the case of earlier well-known marks, the mark must have become well known before the filing or priority date of the contested EUTM application.

3.2 Origin of the earlier mark

As Article 8(2) EUTMR does not apply to oppositions based on Article 8(3) EUTMR, it cannot serve to define the territorial extent of protection granted by Article 8(3) EUTMR. In the absence of any other reference in Article 8(3) EUTMR to a ‘relevant territory’, it is immaterial whether the earlier trade mark rights reside in the European Union or not.

The practical importance of this provision lies precisely in the legal capacity it confers on holders of trade mark rights outside the European Union to defend these rights against fraudulent filings, since proprietors of trade mark rights within the European Union may rely on the other grounds provided for in Article 8 EUTMR to defend their earlier rights from such acts. Of course, EUTMs or national marks, which provide a basis for opposition pursuant to Article 8 EUTMR, also qualify as earlier marks that can be invoked as a basis for an Article 8(3) EUTMR opposition.

4 Conditions of Application

Article 8(3) EUTMR entitles trade mark proprietors to oppose the registration of their marks as EUTMs, provided the following substantive cumulative requirements are met (13/04/2011, T-262/09, First Defense Aerosol Pepper Projector, EU:T:2011:171, § 61).

1. The applicant is or was an agent or representative of the proprietor of the mark. 2. The application is in the name of the agent or representative. 3. The application was filed without the proprietor’s consent. 4. The agent or representative fails to justify its acts. 5. The signs and the goods and services are identical or closely related.

4.1 Agent or representative relationship

4.1.1 Nature of the relationship

In view of the purpose of this provision, which is to safeguard the legal interests of trade mark proprietors against the misappropriation of their trade marks by their commercial associates, the terms ‘agent’ and ‘representative’ should be interpreted broadly to cover all kinds of relationships based on any business arrangement (governed by a written or oral contract) where one party is representing the interests

of another, regardless of the nomen juris of the contractual relationship between the principal-proprietor and the EUTM applicant. It is sufficient for the purposes of Article 8(3) EUTMR 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 applicant, whether expressly or implicitly, a general duty of trust and loyalty as regards the interests of the trade mark proprietor (11/11/2020, C‑809/18 P, MINERAL MAGIC, EU:C:2020:902, § 84-85).

It follows that Article 8(3) EUTMR may also extend, for example, to licensees of the proprietor, or to authorised distributors of the goods for which the mark in question is used.

Given the variety of forms that commercial relationships may acquire in practice, a case-by-case approach is applied, focusing on whether the contractual link between the proprietor-opponent and the applicant is only limited to a series of occasional transactions, or if, conversely, it is of such a duration and content to justify the application of Article 8(3) EUTMR (as regards the points in time that are crucial for the relationship, see, paragraph 4.1.4 ). The material question should be whether it was the cooperation with the proprietor that allowed the applicant to get to know and appreciate the value of the mark and incited the applicant to subsequently try to register the mark in their own name. Nevertheless, some kind of agreement has to exist between the parties. If the applicant acts completely independently, without having entered into any kind of relationship with the proprietor, the applicant cannot be considered an agent within the meaning of Article 8(3) EUTMR (13/04/2011, T‑262/09, First Defense Aerosol Pepper Projector, EU:T:2011:171, § 64). The fact that the relationship between the parties can be ‘implicit’ means that the decisive criterion is the existence and nature of a contractual agreement of commercial cooperation established in substance, and not its formal classification (28/06/2023, T‑145/22, GRASS IN BOTTLE (other) / Bottle with strand of grass (3D) et al., EU:T:2023:365, § 53), see paragraph4.1.2 below.

Therefore, a mere customer or a client of the proprietor cannot amount to an ‘agent or representative’ for the purposes of Article 8(3) EUTMR, since such persons are under no special obligation of trust to the trade mark proprietor. It follows that, unless it is proven that the EUTM application was filed by a third party acting on behalf of the EUTM applicant (see paragraph 4.2 below), the contractual agency or representation agreement must be entered into directly by the parties, and not through third parties (28/06/2023, T‑145/22, GRASS IN BOTTLE (other) / Bottle with strand of grass (3D) et al., EU:T:2023:365, § 52).

It is irrelevant for the purposes of Article 8(3) EUTMR whether an exclusive agreement exists between the parties, or just a simple, non-exclusive commercial relationship. Indeed, a commercial cooperation agreement entailing an obligation of loyalty can exist even in the absence of an exclusivity clause (09/07/2014, T‑184/12, Heatstrip, EU:T:2014:621, § 69). Article 8(3) EUTMR also applies to analogous forms of business relationships that give rise to an obligation of trust and confidentiality between the trade mark proprietor and the professional, as is the case with legal practitioners and attorneys, consultants, trade mark agents, etc. However, the legal representative or manager of the opponent’s company cannot be considered as an agent or representative within the meaning of Article 8(3) EUTMR, given that such persons are not business associates of the opponent. The purpose of this provision is not to protect the proprietor from infringing acts coming from within their company. It may well be that such acts can be sanctioned under the general bad faith provision in Article 59(1)(b) EUTMR.

The burden of proof regarding the existence of a cooperation relationship lies with the opponent (13/04/2011, T‑262/09, First Defense Aerosol Pepper Projector, EU:T:2011:171, § 64, 67).

4.1.2 Form of the agreement

It is not necessary for the agreement between the parties to assume the form of a written contract. However, a contractual agreement must be direct (express or implied, written or oral) in order to impose a general duty of trust and loyalty between the parties (28/06/2023, T-145/22, GRASS IN BOTTLE (other) / Bottle with strand of grass (3D) et al., EU:T:2023:365, § 128). Of course, the existence of a formal agreement between the parties will be of great value in determining exactly what kind of relationship exists between them. As mentioned above, the title of such an agreement and the terminology chosen by the parties should not be taken as conclusive. What counts is the kind of commercial cooperation established in substance and not its formal description. Even in cases where a written contract does not exist, it may still be possible to infer the existence of a commercial agreement of the kind required by Article 8(3) EUTMR by reference to indirect indications and evidence, such as the commercial correspondence between the parties, invoices and purchase orders for goods sold to the agent, or credit notes and other banking instruments (always bearing in mind that a mere customer relationship is insufficient for Article 8(3) EUTMR). Even

dispute resolution agreements may be relevant to the extent that they give sufficient information about the past relationship between the parties.

Furthermore, circumstances such as sales targets imposed on the applicant, or payment of royalties, or production of the goods covered by the mark under licence or help in the setting up of a local distribution network, will be strong indications of a commercial relationship of the type covered by Article 8(3) EUTMR.

The Court also decided that active cooperation between an EUTM applicant and an opponent in the advertising of the product, in order to optimise the marketing thereof, could give rise to the fiduciary relationship required under Article 8(3) EUTMR.

However, the mere desire of the applicant to enter into a commercial relationship with the opponent cannot be considered as a concluded agreement between the parties. Prospective agents or representatives are not covered by Article 8(3) EUTMR (see B 26 759 cited above).

4.1.3 Territorial scope of the agreement

Neither Article 8(3) EUTMR nor Article 6septies of the Paris Convention explicitly refer to the territorial scope of the agreement between the principal and its agent. As the purpose of the provision is to guard against the breach of trust that the original proprietor has put in its agent, it would appear that the territorial scope of their agreement should not limit the application of that provision. The agent’s general duty of trust and loyalty as regards the interests of the legitimate proprietor of the mark cannot be limited territorially. In the context of a globalised and integrated economy, the proprietor should reasonably expect to be able to expand into new markets without running into registrations made by the agents it has in its existing markets (14/09/2004, R 460/2003‑2, CELLFOOD / CELLFOOD, § 17‑18).

Therefore, even if the agreement between the agent and the principal concerned only a territory outside the European Union, Article 8(3) EUTMR may still apply.

4.1.4 Relevant points in time

The agent-representative relationship must have been established prior to the filing date of the EUTM application. Therefore, it is immaterial whether after that time the applicant entered negotiations with the opponent, or made unilateral proposals with the purpose of becoming a representative or agent of the latter.

However, even if the agreement between the parties was formally concluded after the filing date of the application, it may still be possible to deduce from the evidence that the parties were already in some form of commercial cooperation before the signature of the relevant contract and that the applicant was already acting as the opponent’s agent, representative, distributor or licensee.

However, the agreement between the parties does not have to be still in force technically when the application is filed. The reference to a filing made by an ‘agent or representative’ should not be understood as a formal requirement that must be present at the time the EUTM application is filed. Article 8(3) EUTMR also applies to agreements that expired before the filing date of the EUTM application, provided that the time that has lapsed is of such duration that it can be reasonably assumed that the obligation of trust and confidentiality was still present when the EUTM application was filed. This is intended to protect the owner of the earlier marks even after the cessation of the contractual relationship from which an obligation of

trust derived (confirmed 13/04/2011, T‑262/09, First Defense Aerosol Pepper Projector, EU:T:2011:171, § 65). However, the post-contractual obligations of trust and loyalty do not apply for an indefinite period, but only for a reasonable transition period after the termination of the agreement, during which the parties may redefine their commercial strategies (28/06/2023), T-145/22, GRASS IN BOTTLE (other) / Bottle with strand of grass (3D) et al., EU:T:2023:365, § 73). Article 8(3) EUTMR and Article 6septies PC do not protect a trade mark proprietor that is careless and makes no efforts to secure trade mark protection on its own. Post-contractual fiduciary obligations mean that none of the parties may use the termination of an agreement as a pretext for getting rid of its obligations, for example, by terminating an agreement and immediately afterwards filing a trade mark. The rationale of Article 8(3) EUTMR and Article 6septies PC is to prevent a situation where a representative in country A of a principal who owns trade marks in country B, and who is meant to market the trade-marked goods and observe the interests of the latter in country A, uses the filing of a trade mark application in country A as a weapon against the principal, for example to force the principal to continue with the representative and to prevent the principal from entering the market in country A. This rationale likewise applies if an agreement exists but the representative terminates it to take advantage and file a trade mark for the same reasons. However, this does not create absolute rights for the principal to obtain trade mark protection in other countries. The mere fact that the principal holds a trade mark in country B does not give the principal an absolute right to obtain trade marks in all other countries; the trade marks registered in different countries are in principle independent from each other and may have different proprietors, in accordance with Article 6(3) PC. Article 6septies PC is an exception to this principle and only to the extent that the contractual or de facto obligations of the parties involved justify this. Only to that extent is it justified that the ensuing EUTM would ‘belong’ to the principal under Article 21 EUTMR (19/11/2007, R 73/2006‑4, PORTER (fig.) / PORTER (fig.) et al., § 26). This should be assessed on a case-by-case basis, and the decisive factor should be whether it is still possible for the applicant to take commercial advantage of its expired relationship with the trade mark proprietor by exploiting the know-how and contacts it acquired because of its position.

4.2 Application in the agent’s name

According to Article 8(3) EUTMR, the trade mark applied for will not be registered where the agent or representative applies for registration thereof in its own name. It will usually be easy to assess whether this requirement has been fulfilled, by comparing the name of the applicant with that of the person appearing in the evidence as the agent or representative of the proprietor.

However, there may be cases where the agent or representative will try to circumvent this provision by arranging for the application to be filed by a third person, whom it

either controls, or with whom it has entered into some form of understanding to that effect. In such cases adopting a more flexible approach is justified. Therefore, if it is clear that because of the nature of the relationship between the person filing the application and the agent, the situation is effectively the same as if the application had been filed by the agent personally, it is still possible to apply Article 8(3) EUTMR, notwithstanding the apparent discrepancy between the applicant’s name and the name of the proprietor’s agent. Such a case could arise if the application is filed not in the name of the agent’s company, but in the name of a natural person that shares the same economic interests as the agent, as for example its president, vice-president or legal representative. Given that in this case the agent or representative could still benefit from such a filing, it should be considered that the natural person is bound by the same limitations as the company.

Moreover, if the person filing the contested application had also signed the agency agreement on behalf of the company, this would have to be considered a strong argument in favour of the application of Article 8(3) EUTMR, since in such a case the applicant cannot possibly deny direct knowledge of the relevant prohibitions. Similarly, if an agency agreement contained a clause holding the management of the company personally responsible for the observance of the contractual obligations undertaken by the agent, this would also have to be considered a further indication that the filing of the application is covered by the prohibition of Article 8(3) EUTMR.

A similar case arises where the agent or the representative and the applicant are distinct legal entities, but the evidence shows that they are controlled, managed or run by the same natural person. For the reasons given above it is appropriate to ‘lift the corporate veil’ and apply Article 8(3) EUTMR also to these cases.

4.3 Application without the proprietor’s consent

Even though the absence of the proprietor’s consent is a necessary condition for the application of Article 8(3) EUTMR, the opponent does not have to submit evidence that shows that the agent was not permitted to file the EUTM application. A mere statement that the filing was made without its consent is generally sufficient. This is because the opponent cannot be expected to prove a ‘negative’ fact, such as the absence of consent. In these cases the burden of proof is reversed and it is up to the applicant to prove that the filing was authorised, or to give some other justification for its acts.

In view of the need to provide effective protection to the legitimate proprietor from unauthorised acts of its agents, the application of Article 8(3) EUTMR should be denied only where the proprietor’s consent is sufficiently clear, specific and unconditional (06/09/2006, T-6/05, First Defense Aerosol Pepper Projector, EU:T:2006:241, § 40).

Therefore, even if the proprietor has expressly authorised the filing of the EUTM application, its consent cannot be considered sufficiently clear if it has not also explicitly specified that the application may be in the name of the agent.

Likewise, even if the proprietor has expressly authorised the filing of an EUTM application, its consent cannot be considered sufficiently specific for the purposes of Article 8(3) EUTMR if there is no indication of the specific signs for which the applicant has permission to file as an EUTM. It will be generally easier to assess whether the filing was authorised by the proprietor where the conditions under which an agent or representative may apply for an EUTM application are adequately regulated by contract, or are given by other kinds of direct evidence (letters, written representations, etc.). In most cases, such evidence will be sufficient to demonstrate whether the proprietor has given its express consent, or if the applicant has exceeded the limits of its authorisation. In other cases, a contract will either not exist or it will be inadequate on the subject. Although the wording of Article 8(3) EUTMR is in principle broad enough to include cases of tacit or implied consent, such consent should only be inferred if the evidence is sufficiently clear as to the intentions of the proprietor. If the evidence is completely silent as to the existence of an express or implied authorisation, lack of consent should be generally presumed. Notwithstanding indirect indications and evidence pointing to implied consent, any ambiguity or doubt should be interpreted in favour of the opponent, as it will usually be quite difficult to assess whether such consent is sufficiently clear and unequivocal. For example, the mere fact that the proprietor tolerated unauthorised applications in the name of the agent in third jurisdictions cannot alone create legitimate expectations on the part of the applicant that the proprietor will not object to the filing of an EUTM application either.

The fact that the proprietor tolerates conduct outside the boundaries of a contract (such as use of the sign) cannot lead to the conclusion that filing the EUTM did not breach the established fiduciary duty if consent is not clear, specific and unconditional.

Even where consent of the proprietor has been deemed to be clear, specific and unconditional, it will be a question of fact to determine if such consent survives a change of proprietor by way of an asset sale.

4.4 Absence of justification on the part of the applicant

As mentioned above, since it is not possible for the opponent to prove the absence of consent, the burden of proof is reversed and it is up to the applicant to show that the filing of the application was authorised by the proprietor. Although Article 8(3) EUTMR treats the lack of the proprietor’s consent and the absence of a valid justification on the part of the applicant as two separate conditions, these requirements largely overlap to the extent that if the applicant establishes that the filing of the application was based on some agreement or understanding to this effect, then it will also have provided a valid justification for its acts. In addition, the applicant may invoke any other kind of circumstance showing that it had a justification for filing the EUTM application in its own name. However, in the absence of evidence of direct consent, only exceptional reasons are accepted as valid justifications, in view of the need to avoid a violation of the proprietor’s legitimate interests without sufficient indications that its intention was to allow the agent to file the application in its own name. For example, it could be possible to infer that the proprietor has tacitly consented to the filing of the application if it does not react within a reasonable period of time after having been informed by the applicant that it intends to apply for an EUTM in its own name. However, even in such a case it will not be possible to assume that the application has been authorised by the proprietor if the agent had not made it sufficiently clear to the proprietor in advance in whose name it would file the application. Another case of valid justification could be if the proprietor causes its agent to believe that it has abandoned the mark, or that it is not interested in obtaining or maintaining

any rights in the territory concerned, for example, by suspending the use of the mark over a relatively long period of time. The fact that the proprietor does not want to spend money on registering its trade mark does not give the agent a right to act on its own initiative, as the proprietor might still have an interest in using its trade mark in the territory although it is not registered. Such a business decision cannot be taken in itself as a sign that the proprietor has given up the rights in its mark. Justifications exclusively linked to an applicant’s economic interests, such as the need to protect its investment in setting up a local distribution network and promoting the mark in the relevant territory, cannot be considered valid for the purposes of Article 8(3) EUTMR. Nor can the applicant successfully argue in its defence that it is entitled to some financial remuneration for its efforts and expenditure in building up goodwill for the mark. Even if such remuneration were well deserved or is expressly stipulated in the agency agreement, the applicant cannot use the registration of the mark in its own name as a means of extracting money from the opponent or in lieu of financial compensation, but should try to settle its dispute with the proprietor either by way of agreement or by suing for damages. Finally, if the applicant does not provide any justification for its actions, it is not for the Office to make any speculations in that regard (09/07/2014, T-184/12, Heatstrip, EU:T:2014:621, § 73-74).

4.5 Relationship between the marks and between the goods and services

4.5.1 Protection beyond identical marks and identical goods and services

Article 8(3) EUTMR provides that an EUTM application will not be registered where an agent or representative of the proprietor of the mark applies for registration thereof in their own name. Such an explicit reference to the principal’s trade mark gives the prima facie impression that the EUTM applied for must be the same as the earlier mark. A literal interpretation of Article 8(3) EUTMR would lead to the conclusion that its application is only possible where the agent or representative intends to register a mark identical to that of the proprietor. Moreover, the text of Article 8(3) EUTMR does not refer to the goods and services for which the application has been filed and for which the earlier mark is protected. Thus, it gives no guidance on what the exact relationship between the respective goods and services should be for the provision to apply. A dissimilarity of the marks or the goods and services precludes the application of Article 8(3) EUTMR as in those cases the contested mark could not be attributed to the original proprietor. However, applying Article 8(3) EUTMR exclusively to identical marks for identical goods or services would render this provision largely ineffective, as it would allow the applicant to make variations either to the earlier mark or to the specification of goods and services that would still allow the contested mark to be attributed to the original proprietor. Therefore, the scope of application of Article 8(3) EUTMR should not be limited to identical marks but should also extend to similar marks (11/11/2020, C‑809/18 P, MINERAL MAGIC, EU:C:2020:902, § 74, 91 and 99). Likewise, its application cannot be precluded just because the goods or services are similar, and not identical (11/11/2020, C‑809/18 P, MINERAL MAGIC, EU:C:2020:902, § 99). However, the assessment of similarity for the purposes of Article 8(3) EUTMR must be made in due consideration of the objective pursued by that provision, which is to prevent the misappropriation of the earlier mark by the agent or representative of the proprietor of that mark. Moreover, not just any degree of similarity between the marks and the goods or services at issue may entail a misappropriation of the earlier mark. In particular, likelihood of confusion is not a condition for the application of Article 8(3) EUTMR (11/11/2020, C‑809/18 P, MINERAL MAGIC, EU:C:2020:902, § 92). The degree of similarity between the marks and the goods or services should be such so as to guarantee that the purpose of Article 8(3) EUTMR is met, namely to prevent the misappropriation of the mark by the proprietor’s agent (11/11/2020, C‑809/18 P, MINERAL MAGIC, EU:C:2020:902, § 72).

4.5.2 Relationship between the marks

It must be verified that the contested mark is sufficiently close to the earlier mark that, despite any variations, it would still be attributed to the original proprietor. Variations to the earlier mark which do not affect its original distinctiveness are not sufficient to exclude the application of Article 8(3) EUTMR. On the other hand, where the contested mark contains variations that alter the original distinctiveness of the earlier mark, it would be, in principle, more unlikely to find that there was misappropriation.

4.5.3 Relationship between the goods and services

It must be verified whether the goods and services display a close relationship in commercial terms such that the use of the contested mark for those goods or services would pose a serious obstacle for the original proprietor to enter the EU market or continue exploiting its mark on that market.

What counts is that the contested goods or services may be perceived by the public as being provided as a result of an agreement between the parties and that it would be reasonable for the original proprietor to provide such goods or services itself in view of the scope of protection of the earlier mark.

4.5.4 Combined assessment

The required degree of similarity between the marks and between the goods or services at issue cannot be defined in advance since otherwise Article 8(3) EUTMR would be deprived of the necessary flexibility to adapt its scope to the different ways that an agent may attempt to misappropriate the original proprietor’s mark. The assessment depends on a factual evaluation of the relevant circumstances of each case. It may be that (i) the marks are not identical but the goods or services at issue are, (ii) the goods or services at issue are not identical but the marks are, or (iii) neither the marks, nor the goods and services at issue are identical. It follows from the concept of ‘distinctiveness’ that the assessment of the impact of any variation on the original distinctive character of the earlier mark necessarily entails an assessment in relation to the goods and services. Therefore, the comparison of the marks, for the purposes of Article 8(3) EUTMR, cannot be done in isolation from the goods and services. Since the essential question is whether the contested mark can be attributed to the original proprietor, the assessment of the impact of the variations on the original

distinctive character of the earlier mark may vary depending on the particular goods and services of the contested mark. For example, if all the contested goods were similar to the same degree to those of the earlier mark, it may still be that the contested mark would be attributed to the original proprietor in relation to some of them only, but not in relation to others due to the different impact of the variations on the original distinctive character of the earlier mark in relation to those other contested goods.