Agent cannot register CTM without trademark owner's consent

In Adamowski v Office for Harmonisation in the Internal Market (OHIM) (Cases T-537/10 and T-538/10, November 29 2012), the General Court has affirmed a decision of the First Board of Appeal of OHIM cancelling the word mark and the word-and-device mark FAGUMIT.

Ursula Adamowski, a German citizen, and Polish company Fabryka Wȩźy Gumowych i Tworzyw Sztucznych Fagumit sp zoo (hereinafter Fagumit) cooperated for many years; the company managed by Adamowski imported Fagumit products into Germany.

In 2003 Adamowski filed two Community trademark (CTM) applications in her own name for the word mark FAGUMIT and the word-and-device mark FAGUMIT in Classes 12 and 17 of the Nice Classification. Both marks were registered in June 2004. In April 2008 Fagumit filed applications for a declaration of invalidity of the two CTMs on the grounds that:

1. the CTMs had been filed in bad faith (Article 51(1)(b) of the Community Trademark Regulation (40/94), now Article 52(1)(b) of the Community Trademark Regulation (207/2009));
2. the applicant was a disloyal agent who had filed the applications without the consent of the real owner of the marks (Article 52(1)(b) of Regulation 40/94, now Article 53(1)(b) of Regulation 207/2009); and
3. Fagumit had prior rights in the company name Fagumit in Poland (Article 52(1)(c) of Regulation 40/94, now Article 53(1)(c) of Regulation 207/2009). 

In addition, Fagumit owned an identical word-and-device mark, which was registered in Poland in January 1997.

The Cancellation Division of OHIM rejected the applications for a declaration of invalidity. However, the First Board of Appeal followed the line of argumentation of Fagumit, upheld the appeal and ordered the cancellation of the two CTMs. The First Board of Appeal was of the opinion that all three grounds were well founded.

Adamowski appealed to the General Court.

The court first considered Adamowski's argument based on Article 165(4)(b) of Regulation 207/2009, as her applications had been filed before Poland became a member of the European Union and, therefore, also became part of the Community Trademark System. The General Court clearly stated that Article 165(4)(b) does not preclude the proprietor of a mark from filing a cancellation action if it had been possible to do so before that date. In this case, the court took the view that the Polish company could have taken steps against Adamowski’s mark before Poland joined the European Union and, therefore, Article 165(4)(b) was not applicable in this case.

The court then addressed the issue of whether Adamowski was a 'disloyal agent', and took the view that one of the grounds for invalidity would be sufficient to grant the motion. In particular, it reviewed a document dated April 10 1998 by which Adamowski claimed she had obtained Fagumit's consent to file the applications. However, this document related only to the use of specific trademarks and of the term 'Fagumit' in the name of Adamowski's company. This document did not contain any reference to the filing of a trademark and, furthermore, Adamowski was not a party to this document. While the use of the mark FAGUMIT was a logical consequence of the cooperation between Fagumit and Adamowski’s company, the document did not refer to the trademark at issue and did not show any abandonment of Fagumit's mark so that Adamowski could register it as a CTM in her own name.

Hence, the General Court found that the document did not constitute consent. It held that Adamowski, as a disloyal agent, had filed the two CTMs without the consent of the real owner, so that both marks had to be cancelled. It is likely that the other two grounds (bad faith and prior company name rights) would also have had merits in this case.

Cases involving disloyal agents are rare. This case shows very clearly that a distributor or any other agent would be well advised to inform the principal that there is a gap in trademark protection and not to file a trademark application without the consent of the real owner. The registration will come to the surface sooner or later and could then be the subject to a serious dispute between the parties. As in the present case, this could result in the cancellation of a mark which was filed without the consent of the real owner.

Carsten Albrecht, FPS Rechtsanwälte & Notare, Hamburg