A defining case
Comment on agent-principal was compelling, reports Lana Yahya. T-796/17, Mouldpro v EUIPO – Wenz Kunststoff (MOULDPRO), General Court, 14th February 2019.
T-796/17, Mouldpro v EUIPO – Wenz Kunststoff (MOULDPRO), General Court, 14th February 2019
- In order to fall under the scope of Article 8(3) there must be commercial cooperation between the parties that gives rise to a fiduciary relationship
Wenz Kunststoff (the Intervener) is the owner of the earlier European Union trade mark (EUTM) for MOULDPRO. The word mark is registered in respect of hoses in class 17. Mouldpro Aps (the Applicant) applied to register the word mark MOULDPRO in class 17, among other classes. The Applicant filed an application for invalidity under Article 53(1)(b) read in conjunction with Article 8(3), Article 53(1)(c) read in conjunction with Article 8(4) and Article 52 (1)(b) of Regulation (EC) No 207/2009 (now Regulation (EU) 2017/1001). The Cancellation Division rejected the declaration of invalidity in its entirety and the General Court (GC) reaffirmed the findings of the Board of Appeal (BoA). This case provides interesting commentary on the parameters of the “agent-principal”.
The Applicant disputed the assessment made by the BoA on dismissing the appeal on the ground of Article 8(3). It brought two main lines of argument: that the BoA did not take into account the continuous relationship between two companies; and that the terms “agent” and “representative” must be interpreted broadly.
The GC supported the BoA’s assessment that the commercial relationship did not give rise to an “agent-principal” relationship. From 2001 to 2006, the Intervener acted as distributor for the Applicant in the German market, selling articles for the moulding industry. The directors of both companies had an ongoing relationship and discussed the possibility of a distribution agreement. According to the Applicant, it is only because of this relationship and continuous exchange of information (information which would not normally be exchanged to third parties) that the Intervener obtained information of the MOULDPRO trade mark and applied for registration of the mark with the objective of keeping the Applicant out of the German market. The GC denied that any relevance attached to the cooperation between the two parties related to this argument because the contractual relationship ended in 2006.
The GC agreed with the BoA that on the facts of the relationship between the two parties there was no fiduciary relationship between them and that the Applicant erred in its submission that the BoA infringed Article 8(3).
The GC also supported the BoA’s assessment on the definition of “agent” or “representative”. The GC stated that the terms should be interpreted broadly, in order to cover all kinds of relationships based on any business agreement governed by oral or written contract and where one party is representing the interest of another. Further, that there must be commercial cooperation between the parties that gives rise to a fiduciary relationship by imposing on the trade mark applicant (implicitly or explicitly) a general duty of trust and loyalty. If the applicant acts independently, without having entered this kind of relationship, it cannot be treated as an agent. Thus, a mere purchaser or client of the proprietor cannot be treated as an agent.
Lana Yahya is a Trainee Trade Mark Attorney at Stobbs