English 
Italiano It may happen, especially if you have activated a surveillance service on your trademark and you are therefore able to find out trademark applications which are identical with or similar to yours, that you unmask a representative, an agent or a distributor who is trying to register your trademark (or a trademark similar to yours) …without your authorization!
What’s going on in these cases of clear bad faith?
The European Union Trademark Regulation n. 2017/1001 (article 8, paragraph 3) provides that
“Upon opposition by the proprietor of the trade mark, a trade mark shall not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent…”
And that (article 59, paragraph 1, absolute grounds for invalidity)
“An EU trademark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where the applicant was acting in bad faith when he filed the application for the trademark”.
The first problem is to understand whether the ban actually concerns only agents and representatives or whether is also concerns other people.
A recent judgement by the Court of Justice (judgment 11 November 2020, C-809/18 P) helps us to better understand the exact boundaries of this hypothesis and in particular to answer the following question:
what is meant by “unauthorized agent or representative”?
The Court highlights how the notions of “agent” and “representative” must be broadly interpreted, to discourage as much as possible those who wish to damage the owner of a trademark.
The rule, therefore
“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”.
(point 85 of the judgement)
In this case there was a distribution agreement between the two parties.
The judgement is interesting also because it sheds light on another doubt generated by the law:
the ban for the unauthorized agent or representative concerns only the filing of trademarks which are identical with those of the legitimate owner or is also extendable to trademark which are similar to the trademark of the legitimate owner?
With regard to the identity / similarity between trademarks, the Court of Justice highlights how Article 8 pursues the objective
“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 that proprietor and may therefore improperly benefit from the effort and investment which the proprietor himself has made”
(point 72 of the judgement)
And points out how
“the view cannot be taken that such misuse may be considered liable to occur only in cases where the earlier mark and the mark applied for by the agent or representative of the proprietor of the earlier mark are identical, and not in cases where the marks at issue are similar”.
(point 73 of the judgement)
Did you find this article interesting? Share it!