OPINION OF ADVOCATE GENERAL

PITRUZZELLA

delivered on 30 April 2020 ( 1 )

Case C‑809/18 P

European Union Intellectual Property Office (EUIPO)

v

John Mills Ltd

(Appeals — EU trade mark — Opposition proceedings — Application for registration of a trade mark made by the agent or representative of the lawful proprietor of the mark — Article 8(3) of Regulation No 207/2009)

1. By its appeal in this case, the European Union Intellectual Property Office (EUIPO) seeks the setting aside of the judgment of 15 October 2018, John Mills v EUIPO — Jerome Alexander Consulting (MINERAL MAGIC) (T‑7/17, EU:T:2018:679), by which the General Court upheld the action brought by the company John Mills Ltd against the decision of the First Board of Appeal of EUIPO of 5 October 2016 (Case R 2087/2015-1) (‘the contested decision’), relating to opposition proceedings instituted by Jerome Alexander Consulting Corp.

2. EUIPO’s appeal affords the Court an opportunity to rule, for the first time, on the interpretation of Article 8(3) of Regulation No 207/2009 ( 2 ) (now Article 8(3) of Regulation 2017/1001 ( 3 )), which stipulates as one of the relative grounds for refusing registration of a sign as an EU trade mark the fact that the application for registration was made by the agent or representative of the proprietor of the trade mark in his own name without the proprietor’s consent. ( 4 )

I. Legal framework

A. International law

3. The European Union is party to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) of 15 April 1994, ( 5 ) which constitutes Annex 1C to the Agreement establishing the World Trade Organisation (WTO). ( 6 ) Article 2(1) of TRIPS provides that, in respect of Part II thereof, which contains the provisions relating to trade marks, Members are to comply with Articles 1 to 12 of the Convention for the Protection of Industrial Property, signed in Paris on 20 March 1883, last revised at Stockholm on 14 July 1967 and amended on 28 September 1979, ( 7 ) which is binding on all the EU Member States.

4. Article 6 septies of the Paris Convention, as revised and amended, provides: ‘(1) If the agent or representative of the person who is the proprietor of a mark in one of the countries of the Union applies, without such proprietor’s authorisation, for the registration of the mark in his own name, in one or more countries of the Union, the proprietor shall be entitled to oppose the registration applied for or demand its cancellation or, if the law of the country so allows, the assignment in his favour of the said registration, unless such agent or representative justifies his action. (2) The proprietor of the mark shall, subject to the provisions of paragraph (1), above, be entitled to oppose the use of his mark by his agent or representative if he has not authorised such use. (3) Domestic legislation may provide an equitable time limit within which the proprietor of a mark must exercise the rights provided for in this article.’

B. EU law

5. Article 8 of Regulation No 207/2009, which applies ratione temporis to the fact of the case, lists the relative grounds for refusal of registration of a trade mark. Paragraph 3 of that article reads as follows: ‘Upon opposition by the proprietor of the trade mark, a trade mark shall 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.’ ( 8 )

6. Article 11 of Regulation No 207/2009, which is headed ‘Prohibition on the use of a Community trade mark registered in the name of an agent or representative’, provides that, ‘where a Community trade mark is registered in the name of the agent or representative of a person who is the proprietor of that trade mark, without the proprietor’s authorisation, the latter shall be entitled to oppose the use of his mark by his agent or representative if he has not authorised such use, unless the agent or representative justifies his action’. ( 9 )

7. Pursuant to Article 18 of the same regulation, headed ‘Transfer of a trade mark registered in the name of an agent’, ‘where a Community trade mark is registered in the name of the agent or representative of a person who is the proprietor of that trade mark, without the proprietor’s authorisation, the latter shall be entitled to demand the assignment in his favour of the said registration, unless such agent or representative justifies his action’. ( 10 )

8. Finally, Article 53(1)(b) of Regulation No 207/2009 provides that ‘a Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings … where there is a trade mark as referred to in Article 8(3) and the conditions set out in that paragraph are fulfilled’. ( 11 )

II. Background to the dispute, the proceedings before EUIPO, the procedure before the General Court and the judgment under appeal

9. On 18 September 2013, the company John Mills Ltd filed with EUIPO an application for registration of an EU trade mark in respect of the word sign ‘MINERAL MAGIC’. The goods designated in the application are in Class 3 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Hair lotions; abrasive preparations; soaps; perfumery; essential oils; cosmetics; preparations for cleaning and care of the skin, scalp and hair; deodorants for personal use’.

10. On 23 April 2014, Jerome Alexander Consulting Corp. filed a notice of opposition to registration of the mark applied for, relying on the ground for refusal laid down in Article 8(3) of Regulation No 207/2009. The opposition was based, inter alia, on the word mark ‘MAGIC MINERALS BY JEROME ALEXANDER’, registered in the United States on 15 January 2013 for the following goods: ‘Face powder featuring mineral enhancements’. On 18 August 2015, the Opposition Division rejected the opposition. On 15 October 2015, Jerome Alexander Consulting filed with EUIPO a notice of appeal against that decision.

11. On 5 October 2016, the First Board of Appeal of EUIPO adopted the contested decision, by which it annulled the Opposition Division’s decision and, on the basis of Article 8(3) of Regulation No 207/2009, refused to register the mark applied for. In its decision, the Board of Appeal first of all recalled the purpose of Article 8(3) of Regulation No 207/2009, which is ‘to prevent the misuse of a trade mark by the trade mark proprietor’s agent’, ( 12 ) and listed the conditions which, in its view, have to be fulfilled for an opposition on that basis to succeed, namely, ‘the opposing party must be the proprietor of the earlier mark; the applicant for the mark must be or have been the agent or representative of the proprietor of the mark; the application must have been filed in the name of the agent or representative without the proprietor’s consent and without there being legitimate reasons to justify the agent’s or representative’s action; and the application must relate in essence to identical or similar signs and goods’. ( 13 ) The Board of Appeal thus concluded that ‘there existed, at the time of the filing of the trade mark application, an actual, ongoing, non-transient business relationship between the parties which gave rise to a general duty of trust and loyalty and that the applicant was an agent within the meaning of Article 8(3) of Regulation No 207/2009’. ( 14 ) Lastly, the Board of Appeal found that, in this case, the goods covered by the signs at issue were identical ( 15 ) and that the signs at issue were similar. ( 16 )

12. On 5 January 2017, John Mills brought an action before the General Court for the annulment of the contested decision. That action was based on a single plea in law, subdivided into three complaints, alleging infringement of Article 8(3) of Regulation No 207/2009. The first complaint concerned the finding that the company John Mills was an ‘agent or representative’ within the meaning of that provision. By its second and third complaints, John Mills alleged that the Board of Appeal had erred in finding Article 8(3) to be applicable even though the signs at issue were merely similar, rather than identical, and despite the fact that the goods covered by the earlier trade mark were not identical to the goods covered by the trade mark applied for.

13. The General Court examined the second complaint first, and upheld it. It consequently annulled the Board of Appeal’s decision, without ruling on the first and third complaints, and ordered EUIPO and Jerome Alexander Consulting each to pay half of the costs incurred by John Mills.

III. Procedure before the Court and forms of order sought

14. By document lodged at the Registry of the Court of Justice on 20 December 2018, EUIPO brought the present appeal. EUIPO asks the Court to set aside the judgment under appeal and to order John Mills to pay the costs. John Mills asks the Court to dismiss EUIPO’s appeal and to order EUIPO to pay the costs. EUIPO and John Mills presented their arguments at the hearing on 16 January 2020.

IV. The appeal

15. EUIPO puts forward two grounds of appeal. By the first, it alleges that the General Court infringed Article 8(3) of Regulation No 207/2009. By the second, it alleges violation of Article 36 of the Statute of the Court of Justice of the European Union.

A. The first ground of appeal, concerning infringement of Article 8(3) of Regulation No 207/2009

1. The judgment under appeal

16. The first ground of appeal relates to paragraphs 25 to 37 of the judgment under appeal.

17. In paragraph 25 of the judgment, after observing that the intention behind Article 8(3) of Regulation No 207/2009 is to ‘prevent the misuse of the proprietor’s trade mark by his agent or representative, as such agents or representatives may exploit the knowledge and experience acquired during their business relationship with the proprietor and therefore improperly benefit from the effort and investment which the trade mark proprietor himself made’, the General Court stated that this provision ‘in essence thus requires that there should be a direct link between the proprietor’s trade mark and the trade mark requested to be registered by the agent or representative in his own name’ and that ‘such a link can exist only if the trade marks in question match.’ The General Court then stated that an interpretation whereby the earlier trade mark and the trade mark applied for must be identical – not merely similar – in order for Article 8(3) of Regulation No 207/2009 to apply was suggested by both the travaux préparatoires for Regulation No 40/94 on the Community trade mark ( 17 ) (paragraphs 26 to 31 of the judgment under appeal) and the wording of Article 6 septies of the Paris Convention (paragraphs 32 to 35 of the judgment under appeal).

2. Arguments of the parties

18. EUIPO argues that the General Court misinterpreted Article 8(3) of Regulation No 207/2009 by limiting its scope to cases where the signs are identical and ascribing to that concept of identicality the same meaning as it has in Article 8(1)(a) of Regulation No 207/2009. EUIPO complains that the General Court favoured a literal interpretation of Article 8(3) of Regulation No 207/2009, one that fails to take due account of the objective of that provision. EUIPO maintains in this connection, first, that a literal interpretation leaves open the possibility that the provision applies equally to marks that are similar and, secondly, that the EU judicature has consistently adopted a teleological approach in its interpretation of provisions of trade mark law. According to EUIPO, an agent or representative might derive an improper benefit, as referred to in paragraph 25 of the judgment under appeal, not only by using a mark identical to that of the proprietor, but also by making modifications that leave the essential elements of the proprietor’s mark identifiable, such as to allow the agent or representative to appropriate them. In such cases, not only would the agent or representative have an opportunity to entice customers away from the trade mark proprietor and reduce the advantages to be gained from expansion on its part or possible entry into the EU market, but he could also prevent the registration of the proprietor’s mark and/or its use within the European Union, on the basis of Article 8(1)(b) or Article 9(2)(b) of Regulation No 207/2009. EUIPO considers that the relevant criterion for the application of Article 8(3) of Regulation No 207/2009, read in the light of its objective, is not the identicality or similarity of the marks at issue, as is required when assessing whether there is a likelihood of confusion, but the ‘equivalence of the marks analysed as a whole in economic or commercial terms’. Such equivalence exists whenever it is possible to ‘clearly recognise’ the proprietor’s sign in the trade mark applied for by the agent or representative. That will happen if the signs at issue coincide ‘in elements in which the earlier mark’s distinctive character essentially consists’. Lastly, EUIPO submits that the fact that applications for registration such as that in issue here may be made in bad faith and provide grounds for invalidity under Article 52(1)(b) of Regulation No 207/2009 does not militate in favour of a restrictive interpretation of Article 8(3) of the regulation. To oblige the proprietor of a mark to await the registration of the sign applied for by the agent or representative before taking action to safeguard its own interests would in fact be contrary to the principles of procedural economy and sound administration.

19. According to John Mills, it is clear from the wording of both Article 8(3) of Regulation No 207/2009 and Article 6 septies of the Paris Convention that those provisions refer to marks that are identical and not merely similar. The import of the wording is, moreover, confirmed by travaux préparatoires for Regulation No 40/94, as the General Court rightly stated. John Mills also claims that the criterion suggested by EUIPO for the application of Article 8(3) of Regulation No 207/2009, which is based on appropriation of the distinctive character of the proprietor’s trade mark by the agent or representative, is vague and imprecise. It observes that the assessment of distinctive character must be carried out not in the abstract, but from the perspective of the relevant consumer, that is to say, the consumer in the State in which the proprietor’s trade mark is registered (or otherwise protected) and not, as the Board of Appeal wrongly concluded, the consumer in the European Union. In such circumstances, it may be difficult to make an assessment of distinctive character. In the present case, no evidence has been adduced of the distinctive character of the words MAGIC MINERALS in relation to the goods ‘face powder featuring mineral enhancements’ from the perspective of American consumers. John Mills also contends that the criterion suggested by EUIPO is broader than the criteria adopted in Regulation No 207/2009, in particular in Article 8(1) and (5) of that regulation. It would be illogical to assume that the EU legislature had intended to afford foreign trade marks — even ones which have never been used in the European Union — broader protection than that conferred on national or EU trade marks. Lastly, John Mills submits that the interpretation of Article 8(3) of Regulation No 207/2009 suggested by EUIPO would result not only in significant difficulties of application, but also to obvious legal uncertainty as to the actual scope of that provision; the type of conduct to which EUIPO refers in its appeal is already the subject of an effective sanction under Article 52(1)(b) of that regulation, which relates to registration in bad faith.

3. Analysis

(a) The interpretation of Article 8(3) of Regulation No 207/2009

(1) Literal interpretation

20. According to the Court’s consistent case-law, the meaning and scope of terms for which EU law provides no definition must be determined in accordance with their usual meaning in everyday language, while the context in which they are used and the purposes of the rules of which they form part must also be taken into account. ( 18 ) Additionally, interpreting a provision of Union law involves a comparison of the various language versions. ( 19 ) Where there is divergence between the various language versions, the provision in question must be interpreted by reference to the purpose and general scheme of the rules of which it forms part. ( 20 )

21. In this case, it is not a question of determining the meaning of a term or expression contained in the provision of which a textual analysis is required, but of assessing whether the words and syntax used in that provision make it possible to identify unequivocally the relationship which, in accordance with that provision, must exist between the trade mark of which the agent or representative seeks registration and the proprietor’s trade mark.

22. Given that the requirement for such a relationship may be unequivocally understood from the wording of Article 8(3) of Regulation No 207/2009, which otherwise would be totally devoid of any logic, I would observe that, on first reading, the provision seems to indicate, in the vast majority of language versions, a superimposition or, to employ the term used by the General Court, a ‘match’ between the two marks. ( 21 ) That is due, in particular, to the use of the definite article in the phrase ‘proprietor of the trade mark’ in the two instances in which that phrase occurs, which implies that the trade mark applied for and the earlier trade mark are actually made up of the same sign. A match of this kind is particularly explicit in some language versions, such as the Spanish version, according to which the thing that must be refused registration is the ‘same’ trade mark (‘la misma’) and in which the phrase ‘proprietor of the trade mark’ (‘titular de la marca’) becomes, in the second instance when that phrase is used, ‘proprietor of the said trade mark’ (‘titular de dicha marca’). ( 22 )

23. I do not, however, think it unambiguously clear from the wording of the provision that only a trade mark that is identical to that of the proprietor, and not also a trade mark that is in some respects different from the proprietor’s trade mark, can be the subject of the relative ground for refusal set out in Article 8(3) of Regulation No 207/2009. Moreover, while it is true that a trade mark is also defined by reference to the goods and services in relation to which it is protected, the wording of Article 8(3) does not expressly indicate what relationship must exist between the goods and services designated in the application for registration and the goods and services covered by the proprietor’s trade mark. Thus, it does not with certainty exclude from the provision’s scope signs which, although identical, are intended to be used for goods and services that are not identical.

24. Recourse must therefore be had to other rules of interpretation in order to determine the scope of the provision in question. Indeed, the General Court did not, contrary to what EUIPO asserts, rely on a literal interpretation of Article 8(3) of Regulation No 207/2009, but, in paragraph 25 of the judgment under appeal, inferred the requirement for a ‘direct link’ between the proprietor’s trade mark and that of the agent or representative – to be understood as meaning that the two ‘match’ – from the objective which the provision seeks to attain. ( 23 )

(2) Schematic interpretation

25. In my opinion, some aspects of the internal structure of Article 8(3) of Regulation 207/2009 militate in favour of a ‘match’ between the trade mark of the agent or representative and the proprietor’s trade mark. There is the positive condition, imposed in that provision, that the application for registration must be made by the agent or representative ‘in his own name’ and the negative condition that this should be done without the proprietor’s consent. Both favour the conclusion that the trade mark for which registration is sought in the name of the agent or representative is in fact the property of the lawful proprietor in whose name, or with whose consent, the application should have been made. Moreover, that conclusion is corroborated by Article 18 of Regulation No 207/2009, which appears in Section 4 of the regulation, entitled ‘Community trade marks as objects of property’, which provides for the right of the proprietor to demand the assignment in his favour of the registration effected by the agent or representative without authorisation.

26. However, if Article 8 of Regulation No 207/2009 is considered in its entirety, it becomes clear that paragraph 3 is independent of paragraph 1 of that article. Both provisions govern grounds for refusal relating to cases of conflict between the mark applied for and an earlier mark, each of them laying down the conditions for its application specific to the particular ground. Thus, paragraph 1 contemplates, in subparagraphs (a) and (b), the two cases of two-fold identicality and of similarity giving rise to confusion between the trade marks in question, while paragraph 3 requires the existence of a particular relationship (that of agency or representation) between the applicant and the proprietor of the earlier mark, the absence of consent on the latter’s part and the absence of reasons justifying the conduct of the agent or representative. On the other hand, paragraph 3 does not specify — still less by reference to the concepts of ‘identicality’ and ‘similarity’ used in paragraph 1 — the relationship that must exist between the trade mark sought and the earlier mark. The same is found to be true on comparing paragraph 3 with paragraph 5 of Article 8 of Regulation No 207/2009, in which, however, express reference is made to the concepts of ‘identicality’ and ‘similarity’.

(3) Historical interpretation

27. As stated in paragraph 27 of the judgment under appeal, the April 1977 pre-draft of the regulation relating to the Community trade mark ( 24 ) provided, in Article 12(3), that the relative ground for refusal under consideration should apply to trade marks that are ‘identical or similar’ to an earlier mark acquired for ‘identical or similar goods’.

28. The express mention of the two-fold requirement that signs and goods or services should be identical or similar was nevertheless removed from the corresponding provision in the proposal for a regulation ( 25 ) which was submitted by the European Commission to the Council in November 1980 and resulted in the adoption of Regulation No 40/94. Neither the pre-draft nor the Commission proposal contained provisions similar to Article 11 or Article 18 of Regulation No 207/2009. ( 26 ) Moreover, neither document contemplated a general ground of invalidity of Community trade marks arising from an application for registration made in bad faith. ( 27 ) The question of abusive registrations was raised in 1982 by the Italian delegation and the recommendation to introduce a provision addressing that question was included in the report of the Council Working Group overseeing the proposal for a regulation on Community trade marks. Those discussions and subsequent discussions that helped establish the content of the rules on registration in bad faith were conducted alongside the discussions on Article 7(3) of the proposal for a regulation, which governed the case where an application is made by the agent or representative of the trade mark proprietor without the latter’s consent. ( 28 )

29. In so far as concerns Article 7(3) of the proposal for a regulation, as mentioned in paragraph 28 of the judgment under appeal, in a document drawn up in the context of the discussions within the Working Group on the proposal for a regulation on Community trade marks, the Council stated that it had rejected a proposal from the German delegation in favour of extending the application of that provision to cases of ‘similar trade marks for similar products’. ( 29 ) That document also states that the proposal from the Danish delegation to extend the scope of the provision so as to apply to any person acting in bad faith was also rejected, because it would have introduced a subjective criterion incompatible with the objective standard envisaged by Article 7(3) of the proposal for a regulation and because it would have enabled the proprietor of an earlier right to oppose the creation of a Community trade mark in the absence of reciprocity.

30. As the General Court rightly concluded in paragraph 30 of the judgment under appeal, the travaux préparatoires for Regulation No 40/94 provide clear evidence of the legislature’s intention to keep the scope of Article 8(3) of that regulation (which subsequently became Article 8(3) of Regulation No 207/2009) within clearly defined limits. The application of that provision to similar trade marks for similar goods, in particular, was expressly rejected. Given that context, contrary to EUIPO’s submission, the fact that that provision does not expressly state that it applies in cases of similar signs cannot be ascribed the same importance, for the purposes of interpretation, as the fact that no express reference is made to the concept of identicality. First of all, the appropriation by an agent or representative of a sign identical to that of the proprietor is the typical situation covered by the provision under consideration, as is unequivocally reflected in its wording. Secondly, as we have seen, the absence of any reference to the concept of similarity was the result of a specific intention on the part of the legislature, one that was expressed on two separate occasions in the course of the legislative process leading to the adoption of Regulation No 40/94, first implicitly, then explicitly.

31. I would add that another matter militates in favour of the view that the Community legislature intended to confine the scope of the relative ground for refusal under consideration to cases where the signs at issue objectively match, namely the fact that its application is not conditional on the proof of other factors, either objective (such as the unauthorised agent’s or representative’s having derived an unfair advantage or the lawful proprietor’s having suffered loss) or subjective (such as the existence of bad faith on the part of the unauthorised agent or representative). Where there is a match of this kind, unless the unauthorised agent or representative is able to justify his actions, the protection of the proprietor is automatic, albeit it is left to his initiative.

(4) Teleological interpretation

32. As has long been recognised in the case-law of the General Court, the relative ground for refusal set out in Article 8(3) of Regulation No 207/2009 is designed to prevent the misuse of any trade mark by the agent or representative of the lawful proprietor of that mark, who, exploiting the knowledge and experience acquired in the course of his business relationship with the proprietor, could improperly benefit from the effort and investment made by the trade mark proprietor. ( 30 ) It is intended to apply essentially to situations where the proprietor of a mark that is protected exclusively outside the European Union supplies its own goods or services in the European Union market through an agent or representative. In such situations the trade mark proprietor is exposed to the risk of unfair competition from the agent or representative. The agent or representative could, after registering the trade mark in the European Union in his own name, enter into competition with the proprietor and, relying on the right of priority he will have acquired, prevent the proprietor from using the trade mark or, if the proprietor is not yet present in the EU market, prevent the proprietor from entering that market. There is nothing to prevent the proprietor from opposing registration of the mark on the basis of the relative ground for refusal in question, even if the mark enjoys some form of protection in the European Union or in a Member State. However, in such a case, the proprietor will also have at its disposal the other protection mechanisms provided for by Article 8, provided that the conditions for their application are met.

33. A broad interpretation of Article 8(3) of Regulation No 207/2009, such as that favoured by EUIPO, which would include the case of mere similarity between the sign for which registration is sought and the opponent’s sign, would certainly assist in implementing the objective of protection pursued by that provision. However, contrary to EUIPO’s submission, a narrow interpretation, one that limits the scope of Article 8(3) of Regulation No 207/2009 to cases where the conflicting marks are identical, would not render the provision ineffectual; it would merely confine the objective of protection to clearly defined cases.

34. To the extent that such a limitation appears to be consistent both with the wording of the provision in question and with the clear intention of the EU legislature, I would query whether it is permissible, when interpreting the provision, to disregard those matters and instead advocate a reading which seems to me to go beyond a mere teleological interpretation and would result in an application by analogy of the rule contained in it. ( 31 ) I would observe in this connection, first, that the Court has already had occasion to clarify that recourse to a teleological interpretation must not result in a reading of the provision in question that is at odds with its wording ( 32 ) and, secondly, that, aside from any other consideration, Article 8(3) of Regulation No 207/2009 is an exception to the principle of priority which characterises trade mark law ( 33 ) and, as such, must be interpreted strictly and therefore may not be given an interpretation by analogy. ( 34 )

(5) Article 6 septies of the Paris Convention

35. I would point out that, according to settled case-law, the Court may interpret the provisions of international agreements when they are reflected in EU law or where EU law has been adopted in order to implement them within the European Union. ( 35 )

36. Inserted into the Paris Convention following the Revision Conference of Lisbon in 1958, ( 36 ) Article 6 septies is designed to protect the proprietor of a trade mark that is protected in one of the States party to the convention against abuse on the part of the proprietor’s agent or representative in a different contracting State. ( 37 ) It provides three different forms of protection, intended, respectively, to prevent the registration of the proprietor’s mark by its agent or representative and to facilitate the cancellation of such registrations; to prevent unauthorised use by such agent or representative; and to facilitate the assignment to the proprietor of a mark unlawfully registered by an agent or representative. As we have seen, Regulation No 207/2009 (and now Directive 2015/2436) transposes all three of those forms of protection.

37. The wording of Article 6 septies of the Paris Convention, in the authentic French-language version, ( 38 ) indicates even more clearly than the corresponding version of Article 8(3) of Regulation No 207/2009 that the subject matter of the agent’s or representative’s application for registration is the proprietor’s trade mark. ( 39 ) Admittedly, as EUIPO has observed, both the travaux préparatoires for the Lisbon Convention ( 40 ) and the Guide to the application of the Paris Convention ( 41 ) state that the scope of Article 6 septies is to be understood as encompassing both marks that are ‘identical’ and marks that are ‘similar’. ( 42 ) However, since the clear terms of Article 6 septies do not corroborate such an interpretation, I consider that the General Court reached the right conclusion in paragraph 35 of the judgment under appeal in finding that the provision requires that the conflicting marks should match.

38. That conclusion is not, however, decisive for the purposes of interpreting Article 8(3) of Regulation No 207/2009. Indeed, while it is true that Article 8(3) must be interpreted in harmony with Article 6 septies of the Paris Convention, the convention leaves a broad margin of discretion to the contracting States, which, in particular, remain free to provide in their national laws for more extensive protection of industrial property than that prescribed in the convention. ( 43 )

(6) Conclusion regarding the interpretation of Article 8(3) of Regulation No 207/2009

39. Article 8(3) of Regulation No 207/2009 enables the proprietor of a trade mark, even one that is protected only outside the territory of the European Union, to oppose the abusive registration of its own trade mark by its agent or representative. It is the only case in which opposition proceedings may be brought against an application which must be presumed to have been filed in breach of the general principle of good faith. ( 44 ) In other cases, injured parties are unable to prevent registration of the mark and may have recourse only to an action for a declaration of invalidity under Article 52(1)(b) of the regulation.

40. The reasons for these different rules are many. They range from the need to introduce into the EU trade mark system a provision transposing Article 6 septies of the Paris Convention to the concern not to overload the registration procedure with oppositions against allegedly abusive applications in which, unlike in the cases governed by Article 8(3) of Regulation No 207/2009, the bad faith of the applicant may not be presumed (in the absence of justification), and must be proven. However, it seems to me that, underlying Article 8(3) and Article 6 septies of the Paris Convention, there is also the notion that the right to file, or to authorise the filing of one’s own trade mark in a territory other than that in which it is already protected belongs to the proprietor of the mark alone and, therefore, that, leaving aside the question of bad faith, Article 8(3) sanctions first and foremost the lack of standing of the unauthorised agent or representative to file an application. It is, in my opinion, from that perspective that it is necessary to understand the requirement for a match between the trade marks which emerges from the wording of the provision in question.

41. That said, it follows from all the foregoing considerations that a reading of Article 8(3) of Regulation No 207/2009 to the effect that the relative ground for refusal laid down therein also applies in the case of similar signs, at least in so far as reference is made to similarity giving rise to confusion in Article 8(1)(b), would not be compatible either with the wording of Article 8(3) or with the clear intention of the Community legislature at the time when it introduced that provision into the EU trade mark system. In other words, the criterion that must be applied in the comparative assessment of the signs, for the purposes of the application of that provision, cannot be the same as that which applies in the case of opposition to registration on the basis of rights that are protected in the territory of the European Union.

42. However, it does not automatically follow from what I have just said that Article 8(3) of Regulation No 207/2009 must be interpreted as meaning that opposition is possible only where both the conflicting signs and the goods or services which they designate are identical, within the meaning of Article 8(1)(a). Indeed, as EUIPO rightly argues, an interpretation of Article 8(3) according to which its applicability is determined by rigid recourse to the test of identicality between the signs or, a fortiori, to the test of two-fold identicality would enable the agent or representative to evade the penalty of non-registration of a mark simply by altering slightly the sign or the description of the goods or services which the sign designates. The broad scope for circumventing the rule would render it largely ineffective.

43. As I have already stated, within the scheme of Article 8 of Regulation No 207/2009, the relative ground for refusal set out in paragraph 3 of that article is an independent one. There being no express reference to the concepts employed in paragraphs 1(a) and (b) of that article, the link which must exist between the marks at issue in order to trigger the protection afforded by paragraph 3 thereof can be established independently of the scope ascribed to those concepts in connection with the relative grounds for refusal referred to in paragraph 1 thereof.

44. Thus, while it is true, as I have already said, that, on the basis of the wording of Article 8(3) of Regulation No 207/2009, that link presupposes a match between the conflicting signs, I do not think that such a match should automatically be ruled out where the signs are not absolutely identical. Similarly, the proprietor of a trade mark should not be denied the protection afforded by Article 8(3) merely because the goods or services covered by the marks at issue are not exactly identical.

45. It is therefore necessary to identify the criterion according to which it may be concluded that, even if the two marks at issue are not identical and even if the relevant goods and services are not identical, there is nevertheless a match of the kind that is required in order for the relative ground for refusal in question to apply.

46. During the course of the present proceedings EUIPO has maintained a position regarding the necessity of defining such a criterion that is, in my view, too flexible. It has, it seems to me, gone as far as to assert that the distinction between cases in which the relative ground for refusal in question applies and those in which it does not apply rests not only on the relationship between the conflicting signs but also on whether the unauthorised agent or representative has improperly benefited from the filing or use of the trade mark, which is to be assessed on a case-by-case basis. That position should, in my opinion, be rejected. Indeed, as I have already said, while there is no question that the aim of Article 8(3) of Regulation No 207/2009 is to prevent an agent or representative from improperly exploiting the relationship which binds him to the trade mark proprietor, that provision presupposes a match between the conflicting signs. That match must be assessed by reference to a predefined criterion, first and foremost in the interests of legal certainty.

47. That said, I would point out that a criterion of ‘substantial equivalence’ between the conflicting signs, halfway between ‘identicality’ and ‘similarity’ giving rise to confusion, is used in EUIPO’s guidelines, which state that Article 8(3) must be applied not only where the marks are identical and where the relevant goods and services are identical, but also ‘when the sign applied for by the representative or agent essentially reproduces the earlier mark with slight modifications, additions or deletions, which do not substantially affect its distinctiveness’ and when ‘the goods and services in conflict are closely related or equivalent in commercial terms’. ( 45 ) Although the Guidelines do also mention the test of a likelihood of confusion between the trade marks, ( 46 ) it seems to me that, as it is expressed, the criterion which the guidelines propose should be followed requires a link between the trade marks and the relevant goods and services that is closer than that which might give rise to a likelihood of confusion.

48. I consider that that criterion should be accepted, provided that it does not result in assessments of whether there is a likelihood of confusion between conflicting signs. Article 8(3) of Regulation No 207/2009 must, in my opinion, apply not only in the case of identical signs, but also where the trade mark applied for by the agent or representative has slight modifications, additions or deletions, which do not substantially alter the distinctiveness of the earlier mark. That will occur, as the EUIPO Guidelines indicate, when the trade mark applied for reproduces without significant changes the essence of the earlier mark, that is to say, the element or elements which lend it distinctive character. Whether that is the case must be determined by comparing the two signs objectively. When that comparison does not result in the conclusion that the signs are substantially equivalent, despite their being somewhat similar, Article 8(3) will not apply and the lawful proprietor of the mark will be at liberty to bring an action for a declaration of invalidity pursuant to Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation No 2017/1001). Similarly, Article 8(3) of the regulation will not apply where the goods and services designated by the marks at issue are not closely related or equivalent. Consequently, the interests of a lawful proprietor that had, for example, planned to expand the range of goods covered by its trade mark will be amenable only to ex post protection, by means of an action for a declaration of invalidity.

(b) Conclusion relating to the first ground of appeal

49. On the basis of all the foregoing considerations, I consider that, by interpreting Article 8(3) of Regulation No 207/2009 as applying only where the trade marks at issue are identical, the General Court erred in law and that, for this reason, the first ground of appeal should be upheld.

B. The second ground of appeal, alleging infringement of Article 36 of the Statute of the Court of Justice of the European Union

1. The judgment under appeal

50. The second ground of appeal is directed against paragraphs 39 to 42 of the judgment under appeal.

51. After concluding, in paragraph 37 of the judgment under appeal, that Article 8(3) of Regulation No 207/2009 applied only if the trade marks at issue were identical, the General Court held the case-law on Article 15 of Regulation No 207/2009 (now Article 18 of Regulation No 2017/1001), which concerns proof of use, ( 47 ) to be applicable, in that it related in an ‘indirect way’ to the issue of the identical nature of the signs. It then stated, in paragraph 40 of the judgment under appeal, that whether the signs at issue were ‘identical’ should be determined, in particular, on the basis of that case-law. Then in paragraph 41, it confirmed the conclusion reached by the Board of Appeal that the signs at issue had to be considered similar, and stated that it was ‘clear’ and ‘obvious’ that the marks were not identical. In paragraph 42 of the judgment under appeal, the General Court consequently concluded that, since the signs at issue were not identical, the Board of Appeal had erred in considering Article 8(3) of Regulation No 207/2009 to be applicable.

2. Arguments of the parties

52. By its second ground of appeal, EUIPO makes two distinct criticisms of the judgment under appeal. In the first place, it complains that the General Court’s reasoning was contradictory, in that it applied the notion of ‘identicality’ to two legally and factually different situations. According to EUIPO, the test provided for in point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 falls outside the concept of ‘identicality’ and recourse to that test is incompatible with the strict interpretation of Article 8(3) of the regulation which the General Court adopted. In the second place, EUIPO argues that, contrary to what is stated in paragraph 40 of the judgment under appeal, the General Court did not carry out the abovementioned test, but confined itself to observing that the conflicting signs were not obviously identical.

53. John Mills replies that the General Court referred to Article 15 of Regulation No 207/2009 merely in order to clarify that the concept of ‘identicality’ is nuanced in the context of that provision and that, similarly, Article 8(3) of the regulation does not call for the application of a test of strict identicality. In paragraph 41 of the judgment under appeal, the General Court stated that the signs at issue could not be regarded as identical, not even on the basis of the nuanced concept of identicality envisaged by Article 15 of Regulation No 207/2009.

3. Analysis

54. I am of the opinion that the two complaints which EUIPO makes in its second ground of appeal should also be upheld.

55. In the first place, I agree with the appellant that point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 envisages a test not of ‘identicality’ but of ‘substantial equivalence’, in some ways similar to the test I proposed in point 48 above, which requires the identification of the distinctive element or elements of the sign and an assessment of whether those elements have been substantially altered in the course of the commercial use that has been made of the trade mark registered. ( 48 ) As EUIPO has rightly stated, this test in fact presupposes that the two signs under consideration are not identical. ( 49 ) It should also be borne in mind that the comparison between the registered version of a trade mark and the version of the mark that has been used in trade, which will determine whether point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 applies, pursues a different objective and purpose than the comparison between the trade mark applied for and the earlier trade mark that is required for the purposes of applying Article 8(3) of the regulation. In the first case, the comparison is made in order to establish use of a trade mark by its proprietor, even where the proprietor has, with a view to its commercial exploitation, made variations in the sign which, without altering its distinctive character, have enabled it to be better adapted to the marketing and promotion requirements of the goods or services concerned. ( 50 ) In accordance with that objective, the assessment of substantial equivalence envisaged by point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 must be carried out in relation to a series of elements that call for consideration to be given to the requirements and commercial practices of the sector in question, ( 51 ) and to whether or not the sign as it is actually used by the trade mark proprietor continues to perform a distinctive function. ( 52 )

56. In the second place, as EUIPO rightly points out, contrary to the intention expressed in paragraph 40 of the judgment under appeal, the General Court did not enter into the merits of the comparison between the conflicting signs carried out by the Board of Appeal, in order to determine whether the outcome of that comparison was consistent with the application of the test provided for by point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009. Instead, relying on formalistic and essentially circular reasoning, it confined itself to asserting that, since the Board of Appeal had concluded that the marks at issue were merely similar, they could not, by definition, be regarded as identical, thus suggesting, without expressly stating so, that the test, which the General Court itself described as one of identicality, could not in any event be regarded as having been satisfied.

57. On the basis of the foregoing, I consider that the second ground of appeal should also be upheld.

C. Conclusion regarding the appeal

58. Both grounds of appeal are, in my opinion, well founded. I therefore consider that the judgment under appeal should be set aside. Under the first paragraph of Article 61 of the Statute of the Court of Justice of the European Union, if the appeal is well founded, the Court of Justice is to quash the decision of the General Court. In such a case, it may itself give final judgment in the matter, where the state of the proceedings so permits, or refer the case back to the General Court for judgment. The state of the proceedings is such that the Court may give judgment on the second complaint forming part of the single plea in law put forward in the action brought by John Mills.

V. The second complaint forming part of the single plea in law put forward in the action before the General Court

59. It is clear upon reading paragraphs 33 and 34 of the contested decision that the Board of Appeal compared the marks at issue in order to assess whether, from the perspective of the consumer within the European Union, there existed a likelihood of confusion between them. It is therefore clear that it applied a test other than which determines whether Article 8(3) of Regulation No 207/2009 applies, described in point 48 above. The second complaint forming part of the single plea in law put forward in the action brought by John Mills should therefore be upheld and the contested decision annulled.

VI. Costs

60. Under Article 184(2) of the Court’s Rules of Procedure, where the appeal is unfounded or where the appeal is well founded and the Court itself gives final judgment in the case, the Court is to make a decision as to the costs. As I propose that the appeal be upheld and as EUIPO has requested that John Mills be ordered to pay the costs, the latter must be ordered to pay the costs of the appeal proceedings. Moreover, as I propose that the action brought by John Mills at first instance be upheld and the contested decision annulled, I suggest that the Court maintain the order for costs as set out in paragraphs 2 and 3 of the operative part of the judgment under appeal.

VII. Conclusion

61. In light of all the foregoing considerations, I suggest that the Court: – set aside the judgment of 15 October 2018, John Mills v EUIPO – Jerome Alexander Consulting (MINERAL MAGIC) (T‑7/17, EU:T:2018:679); – annul the decision of the First Board of Appeal of EUIPO of 5 October 2016 (Case R 2087/2015‑1); – order John Mills to pay the costs of the proceedings before the Court of Justice; – maintain the order for costs relating to the proceedings before the General Court as set out in paragraphs 2 and 3 of the operative part of the judgment of 15 October 2018, John Mills v EUIPO – Jerome Alexander Consulting (MINERAL MAGIC) (T‑7/17, EU:T:2018:679).

( 1 ) Original language: Italian.

( 2 ) Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

( 3 ) Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

( 4 ) The General Court has already ruled, albeit only indirectly, on the issue raised in the present case in its judgments of 6 September 2006, DEF-TEC Defense Technology v OHIM — Defense Technology (FIRST DEFENSE AEROSOL PEPPER PROJECTOR) (T‑6/05, EU:T:2006:241), of 13 April 2011, Safariland v OHIM — DEF-TEC Defense Technology (FIRST DEFENSE AEROSOL PEPPER PROJECTOR) (T‑262/09, EU:T:2011:171), and of 29 November 2012, Adamowski v OHIM — Fagumit (FAGUMIT) (T‑537/10 and T‑538/10, EU:T:2012:634).

( 5 ) OJ 1994 L 336, p. 214.

( 6 ) OJ 1994 L 336, p. 3.

( 7 ) United Nations Treaty Series, vol. 828, No 11851, p. 305 (‘the Paris Convention’).

( 8 ) A similar provision was included only in the latest directive harmonising trade mark law: see Article 5(3)(b) of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1). Prior to that, however, the Member States were bound to apply Article 6 septies of the Paris Convention.

( 9 ) See also Article 13(1)(a) of Directive 2015/2436.

( 10 ) See also Article 13(1)(b) of Directive 2015/2436.

( 11 ) Regulation No 207/2009 was repealed and replaced, with effect from 1 October 2017, by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1). The new regulation reproduces, without any amendments relevant to the present case, the wording of the provisions of Regulation No 207/2009 mentioned above (Articles 11, 18 and 53(1)(b) of Regulation No 207/2009 becoming, respectively, Articles 13, 21(1) and 60(1)(b) of Regulation 2017/1001).

( 12 ) See, to that effect, the judgment of 6 September 2006, DEF-TEC Defense Technology v OHIM — Defense Technology (FIRST DEFENSE AEROSOL PEPPER PROJECTOR) (T‑6/05, EU:T:2006:241, paragraph 38), cited in paragraph 17 of the contested decision.

( 13 ) These are the conditions listed in paragraph 61 of the judgment of 13 April 2011, Safariland v OHIM — DEF-TEC Defense Technology (FIRST DEFENSE AEROSOL PEPPER PROJECTOR) (T‑262/09, EU:T:2011:171), cited in paragraph 18 of the contested decision.

( 14 ) See paragraph 13 of the judgment under appeal and paragraphs 20 to 25 of the contested decision.

( 15 ) The Board of Appeal found that the ‘cosmetics’ covered by the mark applied for encompassed ‘face powder featuring mineral enhancements’ covered by the earlier mark and that the remaining goods covered by the trade mark applied for had various links with those covered by the earlier mark; see paragraph 14 of the judgment under appeal and paragraphs 30 and 31 of the contested decision.

( 16 ) The Board of Appeal first of all noted the striking resemblance between the first two word elements (‘magic’ and ‘minerals’) of the earlier mark and the word elements of the mark applied for. Secondly, it stated that the earlier mark was likely to be perceived by the relevant public in the European Union as consisting of two components: the component ‘by Jerome Alexander’, likely to be perceived as identifying the entity responsible for the product, and the component ‘magic minerals’, ‘likely to be perceived as an identification of the product itself or the product line’; see paragraph 15 of the judgment under appeal and paragraphs 33 to 35 of the contested decision.

( 17 ) Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1).

( 18 ) Judgments of 24 June 2015, Hotel Sava Rogaška (C‑207/14, EU:C:2015:414, paragraph 25); of 27 September 2012, Partena (C‑137/11, EU:C:2012:593, paragraph 56); and of 10 March 2005, easyCar (C‑336/03, EU:C:2005:150, paragraph 21).

( 19 ) See, inter alia, the judgments of 24 June 2015, Hotel Sava Rogaška (C‑207/14, EU:C:2015:414, paragraph 26), and of 30 January 2001, Spain v Council (C‑36/98, EU:C:2001:64, paragraph 47 and the case-law cited).

( 20 ) See, inter alia, the judgments of 24 June 2015, Hotel Sava Rogaška (C‑207/14, EU:C:2015:414, paragraph 26), and of 19 September 2013, Brey (C‑140/12, EU:C:2013:565, paragraph 74).

( 21 ) See, for example, the Italian, English, French, German, Romanian and Portuguese language versions.

( 22 ) The Spanish version of Article 8(3) of Regulation No 207/2009 reads ‘mediando oposición del titular de la marca, se denegará el registro de la misma cuando el agente o representante del titular de dicha marca la solicite en su propio nombre …’.

( 23 ) The second sentence of paragraph 25 of the judgment under appeal is linked to the first, in which the General Court stated the objective of Article 8(3) of Regulation No 207/2009, by a causal nexus expressed by the adverb ‘thus’ in the English language version (English being the authentic language of the case), ‘donc’ in the French, which is the language in which the judgment was drafted, and ‘quindi’ in the Italian.

( 24 ) III/ex/C/268/77-E, available in English at http://aei.pitt.edu/5526/1/002057_1.pdf.

( 25 ) Proposal for a Council Regulation on Community trade marks, submitted on 25 November 1980 COM/1980/635/FINAL/2 (OJ 1980 C 351, p. 5), Article 7(3) (‘the proposal for a regulation on Community trade marks’).

( 26 ) Provision was made, however, for a relative ground of invalidity of marks registered by an agent or representative without the proprietor’s consent (Article 42(1)(a) of the proposal for a regulation on Community trade marks).

( 27 ) Bad faith merely precluded the limitation in consequence of acquiescence on applications for a declaration of invalidity (Article 44 of the proposal for a regulation on Community trade marks) and countered the prohibition in consequence of acquiescence on opposing the use of a Community trade mark on the basis of prior rights subsisting in a particular locality.

( 28 ) For a history of the drafting of the provisions of Regulation No 40/94 relating to bad faith, see Tsoutsanis, A., Trade Mark Registrations in Bad faith, 2010, Oxford University Press, p. 47 et seq.

( 29 ) See the conclusions of the meeting of the Council Working Group ‘Trade Mark Law’ held in Brussels on 13 and 14 September 1982, Document No 11035/82 of 1 December 1982, Annex I. The note reads ‘The working party did not adopt a suggestion from the German delegation that this provision should also apply to similar trade marks for similar products.’

( 30 ) See the judgment of 6 September 2006, DEF-TEC Defense Technology v OHIM –Defense Technology (FIRST DEFENSE AEROSOL PEPPER PROJECTOR) (T‑6/05, EU:T:2006:241, paragraph 38).

( 31 ) See, to that effect, paragraph 27 the Board of Appeal’s decision.

( 32 ) See, to that effect, the judgments of 23 March 2000, Met-Trans and Sagpol (C‑310/98 and C‑406/98, EU:C:2000:154, paragraph 32), and of 15 September 2016, Mc Fadden (C‑484/14, EU:C:2016:689, paragraphs 68 to 70).

( 33 ) On the extent to which trade mark law offers protection to trade marks not protected in the territory of the European Union, see Kur, A., Not prior in time, but superior in right – How trademark registrations can be affected by third-party interests in a sign, International Review of Intellectual property and Competition Law, IIC, 2013, 44(7), p. 790 et seq.

( 34 ) See the judgment of 26 September 2013, Salzgitter Mannesmann Handel (C‑157/12, EU:C:2013:597, paragraph 39).

( 35 ) See the judgment of 11 March 2003, Ansul (C‑40/01, EU:C:2003:145, paragraph 32 et seq.)

( 36 ) The inclusion of a provision to protect the proprietor of a trade mark against possible abuse on the part of its agent was discussed at the Revision Conference of The Hague (1925) and at the Revision Conference in London (1934), but was opposed by various delegations, in particular the Japanese delegation. See Ricketson, S., The Paris Convention for the Protection of Industrial Property: A Commentary, Oxford, 2015, p. 579 et seq.

( 37 ) See the various abusive practices considered in the acts of the Lisbon Conference of 6 to 13 October 1958, Section XVII of the programme, p. 680.

( 38 ) See Article 29(1)(c) of the Paris Convention.

( 39 ) The French-language version reads ‘Si l’agent ou le représentant de celui qui est titulaire d’une marque dans un pays de l’Union demande, sans l’autorisation de ce titulaire, l’enregistrement de cette marque dans son propre nom …’ (my italics).

( 40 ) See p. 681.

( 41 ) See Bodenhausen, G.H.C., Guide to the application of the Paris Convention for the Protection of Industrial Property as revised at Stockholm in 1967, p. 131, at (https://www.wipo.int/edocs/pubdocs/en/intproperty/611/wipo_pub_611.pdf) (‘the Guide to the application of the Paris Convention’).

( 42 ) I would note, however, that the Guide to the application of the Paris Convention, p. 131 states that Article 6 septies‘may’ also be applied when the conflicting signs are ‘similar’ rather than ‘identical’, suggesting that such application is not part of the prescriptive content of the provision.

( 43 ) See the acts of the Paris Convention, I, p. 131.

( 44 ) When Regulation No 207/2009 was being amended, the Commission suggested inserting a provision to allow registration of a trade mark to be opposed in any case in which the application has been filed in bad faith, while leaving unchanged, and thus independent, the relative ground for refusal relating to abusive conduct on the part of the agent or representative of the lawful proprietor of the mark; see COM(2013) 161 final, Article 8(3)(b). That suggestion was, however, rejected.

( 45 ) EUIPO’s Guidelines for Examination of European Union Trade Marks, Part C, Opposition, Section 3, Unauthorised Filing by Agents of the TM Proprietor (‘the EUIPO Guidelines’), available on EUIPO’s website, p. 19.

( 46 ) See the EUIPO Guidelines, p. 19, which state that ‘the proprietor’s interests would be seriously prejudiced, especially if the earlier mark were already in use and the variations made by the applicant were not significant enough to rule out confusion’.

( 47 ) See paragraph 39 of the judgment under appeal. Pursuant to point (a) of the second subparagraph of Article 15(1), ‘use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered’ is regarded as use of the trade mark.

( 48 ) See, for example, judgment of 13 September 2016, hyphen v EUIPO — Skylotec (Representation of a polygon) (T‑146/15, EU:T:2016:469, paragraph 28), according to which, ‘[in order to find that the distinctive character of the trade mark as registered has altered, it is necessary to carry out] an assessment of the distinctive or dominant character of the components added, on the basis of the intrinsic qualities of each of those components, as well as on the relative position of the different components within the arrangement of the trade mark’; see also judgment of 1 December 2016, Klement v EUIPO (C‑642/15 P, not published, EU:C:2016:918, paragraph 29).

( 49 ) For example, in its judgment of 11 October 2017, EUIPO v Cactus (C‑501/15 P, EU:C:2017:750), the Court held to be equivalent for the purposes of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 a word and figurative trade mark consisting in the word ‘cactus’ and a stylised representation of a cactus and a trade mark consisting only in the stylised representation, without the word element.

( 50 ) See judgments of 23 February 2006, Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE) (T‑194/03, EU:T:2006:65, paragraph 50), and of 3 July 2019, Viridis Pharmaceutical v EUIPO (C‑668/17 P, EU:C:2019:557, paragraph 56).

( 51 ) See, for example, the judgment of 18 July 2013, Specsavers International Healthcare and Others (C‑252/12, EU:C:2013:497, paragraphs 21 to 26), and of 11 October 2017, EUIPO v Cactus (C‑501/15 P, EU:C:2017:750).

( 52 ) See the judgment of 18 July 2013, Specsavers International Healthcare and Others (C‑252/12, EU:C:2013:497, paragraph 23).