26/02/2015 pm28 8:26pm
The Community Trademark system was designed to allow nationals of the states belonging to the European Community to benefit from it.
Any natural or legal person that meets one of the following conditions may apply for a Community Trademark:
- The above-mentioned person is a national of one of the Member States of the European Union, of the Paris Convention or of the World Trade Organization;
- The above-mentioned person has its residence, headquarters or a real and effective industrial or commercial establishment on European Union territory, or on the territory of a Member State of the Paris Convention or of the World Trade Organization.
If none of the above-mentioned conditions are met, a Community Trademark registration may be possible, if a Reciprocity Agreement between the state of the applicant and the European Union exists (e.g. Taiwan has reached such an Agreement).
Given the fact that Romania has become a Member of the European Union starting from 01/01/2007, any Romanian natural person or legal person may apply for a Community Trademark. As stated in the previous chapter, natural persons and legal persons from Romania had the possibility of registering Community Trademarks even before Romania’s Adhesion to the EU (as Romania is a Member of the Paris Convention), but in this event the applicant needed to have a representative from a Member State of the Community, which implied extra costs. Also, the application had to be made in one of the official languages of the Member States; however, starting from 01/01/2007, as a result of Romania’s Adhesion to the European Union, Romanian natural persons or legal persons can directly apply for a Community Trademark (without having a representative), even in Romanian.
Regarding the assistance provided by an OHIM professional representative, it is important to note that the notion of a “representative” is a far broader concept than the concept of a ”trustee” within the national law: natural or legal persons that have their residence, headquarters or a real and effective industrial or commercial establishment on the European Community territory can be represented before the office by an employee; this natural person employee may represent other legal persons which have an economic connection with the legal person that has hired said employee (art. 88 par. 3 of Council Regulation (EC) no. 40/94).
On the other hand, art. 89 of the same Regulation stipulates that representation of natural or legal persons before the Office may only be undertaken by attorneys qualified in one of the Member States and having their place of Business within the Community, to the extent that they are entitled, within said state, to act as a representative in Trademark matters, or by a representative approved by the Offices of the Member States of the European Union, these categories corresponding to the “trustee” defined by national law.
Therefore, we find that the concept defined by the expression “agent or representative” refers to both employees acting on behalf of their employers and/or on behalf of an establishment which is economically linked with the establishment of the employer; in the event that this person (<<agent or representative>>) registers the trademark of the employer or of the economically linked establishment in his own name, this persons’ action can be qualified as an act of bad faith.
Naturally, the following question comes to mind – what happens if a “representative” registers the owners’ trademark in his own name?
Romanian law provides that such a registration can be qualified as registered in bad faith and can be declared invalid only following a court action.
Regarding Community Trademarks, the Community Trademark Regulation provides the following:
“Where a Community Trademark is registered in the name of the agent or representative of a person who is the proprietor of that trademark, without the proprietor’s authorization, the latter shall be entitled to oppose the use of his mark by his agent or representative if he has not authorized such use, unless the agent or representative justifies his action”.
Thus, if a Community Trademark has been registered by the agent or representative of the legitimate owner of the trademark (without the owners’ authorization and without justification for his action), the owner is entitled to request the prohibition of use of his mark by the representative. By extension, we conclude that the real owner of such a trademark can request that the trademark be declared invalid, by invoking art. 51 of the Community Trademark Regulations, as it provides the following:
“A Community Trademark shall be declared invalid on application to the Office …….
(b) where the applicant was acting in bad faith when he filed the application for the Trademark”.
In conclusion, it is important to mention that, from a practical point of view, a “representatives’” attempt to register the trademark of his employer or of a company which collaborates with said employer is likely to be doomed for failure: even if the trademark is registered in the first phase, this registration can be eventually declared invalid.