Trade mark filed by an agent or representative

An agent’s trade mark is a trade mark applied for in its own name, without the proprietor’s authorisation, by the proprietor’s agent or representative. Article 6septies of the Paris Convention allows the proprietor to oppose registration, to seek its cancellation or its assignment to the proprietor, and to prohibit use of the sign. Regulation (EU) 2017/1001 and Directive (EU) 2015/2436 incorporate this mechanism, which French law has transposed among the relative grounds for refusal and invalidity.

Conditions of protection

The proprietor must establish the existence of an agency or representation relationship, which EU case law construes broadly as any commercial cooperation agreement giving rise to a duty of loyalty, such as a distribution agreement. It must also show that the application was filed by the agent in its own name, without authorisation, for an identical or similar sign and for identical or closely related goods or services. The agent escapes sanction only if it justifies its action.

Sanctions and transfer of title

The proprietor may file an opposition, bring an invalidity action or request the assignment of the trade mark to itself, which allows it to take over the filing date obtained by the agent. For the EU trade mark, this right of transfer is provided for by the Regulation. Under French law, the action for recovery of title available against a filing made in fraud of a third party’s rights or in breach of a contractual obligation achieves a comparable result. The filing may also be characterised as a fraudulent filing where the agent’s bad faith is established.

Practical issues

The risk arises mainly on entry into a foreign market, when the local distributor files the manufacturer’s trade mark to secure a negotiating position or to guard against termination of the agreement. The action requires proof of the contractual relationship and its date, which makes it necessary to keep correspondence and contracts. Finally, the implementation of Article 6septies depends on the law of each country where the filing was made.

Key points

A trade mark proprietor has specific remedies against an agent, representative or distributor who files its sign without authorisation, including transfer of title. These remedies require proof of a commercial relationship and of an unauthorised application. The best approach remains preventive: file the trade mark in the country before appointing a distributor there, and include in the contract a prohibition on filing coupled with an obligation to assign. Where a filing is discovered, action should be taken within the local opposition periods.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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