EU: Regulation (EU) 2015/2424, amending Council Regulation (EC) No 207/2009, article n. 18 (“Transfer of a trade mark registered in the name of an agent”).

Marco Venturello | EU | 2016-09-14

Marco Venturello

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Indeed, the proprietor of a trademark runs the risk that his agent or representative, who may be allowed to use the mark by virtue of the contractual relationship, may register the mark in his own name without the proprietor’s consent during the contractual relationship or may, after its termination, refuse to cancel or reassign the trademark which was registered with the proprietor’s consent.

On the basis of art. 6 septies the proprietor of the trademark has the right to “oppose the registration applied for or demand its cancellation or, if the law of the country so allows, the assignment in his favor of the said registration”, unless such agent or representative justifies his action.

Consequently, according to art. 18 EUTMR the proprietor “shall be entitled to demand the assignment in his favor of the said registration, unless such agent or representative justifies his action”.

There are several requirements for the application of art. 6 septies CUP (which are the same for the application of artt. 8, par. 3, 11 and 18 EUTMR):

1) the opposing party – claimant- must be proprietor of the earlier trademark;

The interpretation of that requirement can be the following: the person who should have been the natural proprietor of the trade mark at stake, had his agent or representative not had an illegitimate behavior. More specifically, the opponent must give evidence that it owns the trademark anywhere in the world.

2) the applicant must be or have been the agent or representative of the proprietor of the mark;

The notions of agent and representative may not be understood in a narrow legal sense, but rather commercially, they are to be given a wide interpretation. They may cover all kinds of relationship, based on contractual arrangements, where one party is representing the interests of the other, regardless of the nomen juris of the contractual relationship. The burden of proof regarding the existence of an agent-principal relationship lies with the proprietor, for which is sufficient to establish that there exists some agreement of commercial co-operation 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 owner. In the absence of a formal agreement, the proprietor of the trademark may rely upon commercial correspondence, invoices, other documents exchanged or witness statements. Indeed, an applicant having acted completely independently shall not be considered as an agent or representative of the proprietor.

3) the application must have been filed in the name of the agent or representative, without proprietor’s authorization and also without legitimate reasons;

The registration applied for may be opposed or cancelled if the application has been carried out without implied or express authorization. Consent by the owner of the trademark to the use of it by an agent or representative must be distinguished from the consent to register the trademark, which remains unlawful. The authorization must be clear, specific and unconditional. The burden of proof about consent’s existence or justification’s existence lies on the applicant. In this contest, it is advisable to draft clauses in the distributorship agreement in order to exclude any possible interpretation of implied or express authorization.

4) the application must relate to identical or similar signs and goods;

Although the wording of the CUP seems to refer to identical trademarks, it is understood that it may also be applied to trademarks in respect of which registration is applied for by the agent or representative, which are not identical but similar to those of the proprietor.

It shall be noted that the enforcement of art. 18 wasn’t precisely defined in the EUTMR before the modifications introduced by the EU Regulation 2015/2424, because it isn’t per se an infringement action but amounts to an action per which the proprietor of the trademark claims back the ownership of a trademark.

EU Regulation 2015/2424 amended art. 18 introducing a specification about the way for the proprietor to demand the assignment in his favor of the registration made by the disloyal agent or representative, that simplifies the proprietor’s defense:

“(…) The proprietor may submit a request for assignment pursuant to paragraph 1 of this Article to the following:

(a) the Office, pursuant to Article 53(1)(b), instead of an application for a declaration of invalidity;

(b) a European Union trade mark court (“EU trade mark court”) as referred to in Article 95, instead of a counterclaim for a declaration of invalidity based on Article 100(1). “

EU Regulation 2015/2424 is entered into force on 23 March 2016, but the modification of art. 18 EUTMR shall apply from 1 October 2017.


Marco Venturello, IDI member


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