The CJ has explained the meaning of the phrase “reputation in the Community” in the context of Article 9(1) (c) of Council Regulation (EC).
Pago / Tirolmilch
This reference for a preliminary ruling concerns the interpretation of Article 9(1)(c) of Council Regulation (EC) on the Community trade mark.
Since 2001, PAGO has been the proprietor of a Community figurative mark for, inter alia, fruit drinks and fruit juices. The essential element of the mark is the representation of a green glass bottle with a distinctive label and lid. PAGO markets in Austria a fruit juice called ‘Pago’ in such bottles. The Community trade mark held by PAGO is widely known in that Member State.
Tirolmilch markets, also in Austria, a fruit and whey drink called ‘Lattella’. That drink was initially sold in cartons. Subsequently, it has also been packaged in glass bottles. Two bottle designs resemble in several respects the Community trade mark held by PAGO. In its advertising, Tirolmilch uses a representation which, like the Community trade mark held by PAGO, shows a bottle next to a full glass.
The CJ explained, that Article 9(1) (c) of Council Regulation (EC) on the Community trade mark must be interpreted as meaning that, in order to benefit from the protection afforded in that provision, a Community trade mark must be known by a significant part of the public concerned by the products or services covered by that trade mark, in a substantial part of the territory of the European Community. Depending on the facts of the case, the territory of the one Member State in question (Austria) may be considered to constitute a substantial part of the territory of the Community.
In the opinion of the CJ, the degree of knowledge required must be considered to be reached when the Community trade mark is known by a significant part of the public concerned by the products or services covered by that trade mark. In examining this condition, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it. The condition as to reputation must be considered to be fulfilled when the Community trade mark has a reputation in a substantial part of the territory of the Community, which may be one Member State.