CJEU says ex-business partners can’t register ‘similar’ TMs

The Court of Justice of the European Union (CJEU) has blocked UK consumer products retailer John Mills from registering ‘Mineral Magic’ as an EU trademark.

The decision, issued today, November 11, brings an end to a long-running dispute which previously saw John Mills obtaining a win at the EU General Court.

John Mills first applied for the mark in 2013, covering products including soaps, cosmetics, and hair lotions. The UK company faced an opposition from a former business partner, California-based cosmetics company Jerome Alexander Consulting, which cited a US trademark for ‘Magic Minerals by Jerome Alexander’ covering face powder.

According to the European Union Intellectual Property Office (EUIPO), the two companies had a distribution agreement under which John Mills would sell the US company’s products in the EU.

The European Union Intellectual Property Office (EUIPO) ultimately refused registration of John Mills’ mark, finding that it bore a “striking resemblance” to Jerome Alexander’s brand.

The General Court, on appeal, ruled in favour of John Mills—but the CJEU today cancelled that decision and blocked the ‘Mineral Magic’ mark from registration.

In today’s decision, the CJEU said the General Court had misinterpreted a part of EU trademark law designed to prevent misuse of a trademark by the owner’s “agent or representative”.

The EUIPO argued that John Mills was an “agent” of Jerome Alexander, owing to the distribution agreement between the two companies. The General Court said this law did not apply as the marks were only “similar” and not “identical”.

But the CJEU today ruled that the marks do not need to be “identical”, since the objective of the law was to “prevent the misuse of the earlier mark by the agent or representative of the proprietor of that mark, as those persons may exploit the knowledge and experience acquired during their business relationship”.

The CJEU ordered John Mills to pay the costs of the EUIPO and Jerome Alexander, and dismissed its appeal against the EUIPO’s refusal of the ‘Mineral Magic’ mark.

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