LOCKWOOD | Decision 2603291

014000000 - 014999999, 014352249, 20, 2017, Date, Decision Type, I-company, Involved Parties, IRRIMEC S.R.L, L-trademark, LOCKWOOD, March-2017, OPPOSITION, Trademark, Trademark number

OPPOSITION No B 2 603 291

Nebraska Irrigation, Inc., 911 East 23rd Street, Columbus, Nebraska 68601, United States of America (opponent), represented by BRP Renaud und Partner mbB, Königstr. 28, 70173 Stuttgart, Germany (professional representative)

a g a i n s t

Irrimec S.r.l., Via Lentasio 7, 20122 Milano, Italy (applicant), represented by Ing. C. Corradini & C. S.r.l., Via Dante Alighieri 4, 42121 Reggio Emilia, Italy (professional representative).

On 20/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 603 291 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 352 249 ‘LOCKWOOD‘, namely against all the goods in Class 11. The opposition is based on the U.S. trade mark registration No 3 616 436 ‘LOCKWOOD‘. The opponent invoked Article 8(3) EUTMR.

UNAUTHORISED FILING BY AN AGENT OR REPRESENTATIVE OF THE TRADE MARK OWNER – ARTICLE 8(3) EUTMR

According to Article 8(3) EUTMR, upon opposition by the proprietor of the 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.

Therefore, the grounds for refusal of Article 8(3) EUTMR are subject to the following requirements:

  • the signs are identical or only differ in elements which do not substantially affect their distinctiveness;
  • the goods and services are identical or equivalent in commercial terms;
  • the applicant is an agent or representative of the owner of the earlier mark;
  • the application was filed without the consent of the owner of the earlier mark;
  • the agent or representative fails to justify its acts.

These conditions are cumulative. Therefore, where one of the conditions is not satisfied, the opposition based on Article 8(3) EUTMR cannot succeed.

Agent or representative relationship

The opponent submitted evidence to prove the agent/representative relationship. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

  • Enclosure 2: text of a Nondisclosure Agreement mentioning the opponent and the applicant as the parties to the agreement. However, the agreement is neither signed nor dated.
  • Enclosure 3: e-mail correspondence between a third party and the opponent of 12/06/2015.
  • Enclosure 4: e-mail correspondence between the applicant and the opponent of 22/07/2015 and e-mail correspondence between a third party and the opponent of 22/07/2015 and 23/07/2015.

The agent/representative relationship must be established prior to the filing date of the contested EUTM application. In the present case, the filing date of the contested EUTMA is 13/07/2015.

In view of the purpose of the provision of Article 8(3) EUTMR, 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 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 (confirmed by judgment of 13/04/2011, T-262/09, First Defense Aerosol Pepper Projector, EU:T:2011:171, p. 64).

Therefore, 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. 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.

Nevertheless, some kind of cooperation agreement has to exist between the parties. If the applicant acts completely independently, without having entered into any kind of fiduciary relationship with the proprietor, it cannot be considered an agent within the meaning of Article 8(3) EUTMR (confirmed by judgment of 13/04/2011, T-262/09, First Defense Aerosol Pepper Projector, EU:T:2011:171, § 64).

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

It transpires from the evidence submitted by the opponent that before the filing date of the contested application, there were only some contacts between the applicant and the opponent with a view to establish business cooperation in the future. However, the opponent failed to submit any evidence proving that there was any kind of an agent/representative relationship or any type of cooperation agreement between the parties, be it written or oral. The Nondisclosure Agreement is neither signed nor dated which means that this agreement has not been concluded. The fact that the text is printed on the letterhead paper of the applicant’s company does not change this finding. The e-mail correspondence does not prove any agreement of commercial cooperation or any fiduciary relationship between the parties either.

A 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 decision of 17/03/2000, B 26 759).

It may be the case – or not – that the applicant was incited to file the contested application through the contacts with the opponent, as argued by the opponent. However, this is not sufficient to establish an agent/representative relationship between the parties which is a prerequisite for the application of Article 8(3) EUTMR. No such relationship has been proven by the opponent.

On the basis of the above, the Opposition Division concludes that the evidence submitted is insufficient to prove that the applicant is an agent or representative of the opponent.

As one of the necessary requirements is not met, the opposition must be rejected as not well founded under Article 8(3) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Richard BIANCHI

Vít MAHELKA

Lucinda CARNEY

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

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