In case T-262/09, the facts are the following: Safariland LLC, purchased the assets of the ‘Wyoming company’ which had an agent-principal relationship with DEF-TEC which filed the contested mark FIRST DEFENSE AEROSOL PEPPER PROJECTOR. The opposition brought by Safariland on the basis of Article 8 (3) CTMR, as the transferee of trademark rights, was rejected by the General court after second referral (on the same facts, see previous judgment T-6/05, 6 September 2006)

According to the Board of Appeal, Safariland did not submit that there was any contractual relationship between the parties to the opposition proceedings and such a relationship cannot be inferred from the fact that Safariland continued to behave as if no transfer of assets had taken place. In order to establish that there was a new agent-principal relationship, Safariland would have to show that DEF-TEC was aware that it was now doing business with another company

Under Article 8(3) of Regulation No 207/2009, a trade mark must 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.

It is apparent from the wording of that provision that, for an opposition to succeed on that basis, it is necessary: 1) for the opposing party to be the proprietor of the earlier mark; 2) for the applicant for the mark to be or to have been the agent or representative of the proprietor of the mark; 3) for the application to 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 4) for the application to relate in essence to identical or similar signs and goods. Those conditions are cumulative.

The first condition- proprietorship of the earlier marks- is fulfilled. As to the second condition, it is sufficient for the purposes of Article 8(3) that there be some agreement of commercial co-operation between the parties of a kind that gives rise to a fiduciary relationship by imposing on the trade mark applicant – whether expressly or implicitly – a general duty of trust and loyalty as regards the interests of the trade mark proprietor. Thus, a mere purchaser or client of the proprietor cannot be regarded as an ‘agent’ or as a ‘representative’ for the purposes of that provision, nor it is not necessary for the agreement between the parties still to be in force at the time when the application for the trade mark is filed.

It should be pointed out that, the burden of proof regarding the existence of an agent-principal relationship lay with Safariland which merely showed with invoices that there was a seller-customer relationship which could have been established without a prior agreement between them.

The fact that Safariland created the impression that it is the same company than the Wyoming Company is not sufficient to prove that a business relationship actually exists between Safariland and DEF-TEC which is comparable with the kind of relationship which links a principal and its agent.

The contract produced before the OHIM does not mention the existence of the distribution contract with DEF-TEC or the existence of rights in the marks. As the Board of Appeal found in paragraph 35 of the contested decision, ‘the opponent did not suggest that the situation as regards the business in Europe or the rights to file trade mark applications were expressly dealt with in the asset purchase agreement’. Safariland cannot enjoy the protection conferred by Article 8(3) of Regulation No207/2009 and oppose the registration of the disputed mark on that basis simply by virtue of its status as proprietor of the earlier marks.