Controversial issues of interpretation of the concepts of “agent” and “representative”
Today, the courts have already decided a certain number of court cases where the provisions of Art. 6 secessions of the Paris Convention. This indicates a wide increase in interest in the practical application of the norms of this article for the recognition of a certificate for a mark for goods and services (trademark) invalid.
In Art. 6series of the Paris Convention as the basis for the recognition of a trademark as invalid is often applied together with part 2 of art. 6 of the Law of Ukraine “On the Protection of the Rights to Marks for Goods and Services” (the possibility of misleading regarding the person producing the goods or providing services).
The most controversial issue in practice is the interpretation of the concepts of “agent”, “representative” in the understanding of this article.
As Professor G. Bodenhausen, author of the only authoritative and accessible commentary to the Paris Convention, notes: “Given the purpose of this provision, the above will probably not be interpreted narrowly legally, therefore, this provision will also apply to those who acted as distributors of the product bearing the mark, and who applied to register this mark on their behalf. ”
It should be noted that basically the courts agree with this definition and in order to apply Article 6perties of the Paris Convention are not limited to the concept of “agency”, “representative” relations, defined by civil and business law, which in turn can significantly affect the cost of restoration of accounting in cases where the dishonesty of one of the parties can lead to similar consequences.
However, unfair registration of trademarks is carried out not only on behalf of business entities that are in agent / representative relations with the owner of the trademark. In some cases, such trademarks are registered for individuals (directors, co-founders, co-founders of distribution companies, etc.).
As the judicial practice shows, the courts (of the first instance) repeatedly refused to satisfy the claims, because they came to the conclusion that an individual, even if it was directly connected with a legal entity and had the ability to influence the activities of a legal entity, cannot be considered an agent / representative in the understanding of Art. 6 secessions of the Paris Convention. This position was explained by the fact that, by virtue of the provisions of civil law, an individual cannot be liable for the obligations of a legal entity.
The law enforcement practice of the courts of appeal has demonstrated a difference in the approach to this issue, including in cases where the liquidation of the LLC is also relevant. So, courts of appeal cancel such decisions of the courts of first instance and note that individuals can be recognized as agents / representatives based on the obligation of fair use of civil rights established by civil law.
Evidence of agency / representative relations can be documents confirming the relationship between the owner of a trademark in one of the countries of the Union and his agent / representative, in particular evidence – the delivery of goods to the territory of Ukraine (contracts, customs documents, invoices, etc.), documents, confirming the promotion of goods / services in Ukraine (participation in exhibitions, advertising, etc.), business documentation (correspondence, business cards, etc.).