The European Court of Justice (ECJ) has ruled on the extent of the reputation of a Community trade mark (CTM) that is required under Article 4(3) of the Trade Marks Directive (2008/95/EC) (Article 4(3)) for a successful opposition to a later trade mark application made in an EU member state.
A trade mark will not be registered or, if registered, will be liable to be declared invalid, if it is identical with, or similar to, an earlier CTM, and is registered for goods or services which are identical, similar or dissimilar to those for which the earlier CTM is registered, where the earlier CTM has a reputation in the EU and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier CTM (Article 4(3)).
In PAGO International GmbH v Tirolmilch registrierte Genossenschaft mbH, the ECJ held that, to have a reputation in the EU, a CTM must be known by a significant part of the public concerned by the products or services covered by the CTM, in a substantial part of the territory of the EU (www.practicallaw.com/0-500-5653). It also held that, in some circumstances, a single member state might constitute a substantial part of the EU.
U opposed the registration as a Hungarian trade mark of a figurative sign incorporating the words "be impulsive". Its opposition was based on its earlier CTM IMPULSE. The Hungarian trade marks office allowed the opposition, finding that U had demonstrated the reputation of its CTM in a substantial part of the EU. Its conclusion was based on evidence that U's IMPULSE branded goods had a market share in the UK and Italy, although not in Hungary.
On appeal, the Budapest Court referred to the ECJ the question of whether it is sufficient, for the purposes of proving that a CTM has a reputation within the meaning of Article 4(3), for the CTM to have a reputation in one member state, including where the national trade mark application that has been opposed on the basis of such a reputation has been lodged in a country other than that member state.
The ECJ held that the earlier CTM may be regarded as having a reputation in a substantial part of the EU within the meaning of Article 4(3) even if that reputation is only established in a single member state, and even if that single member state is not the state where the application for the later national mark was filed. The genuine use criteria set out in EU case law are not relevant in this context.
If the earlier CTM has established the necessary level of reputation within the EU, but not with the relevant public in the member state where the later national mark was filed, the CTM owner can still rely on Article 4(3) if it can show that a commercially significant part of that public is familiar with the CTM and makes a connection between it and the later national mark. It must also show that there is, taking into account all relevant factors, actual and present injury to the CTM or, failing that, a serious risk of this injury occurring in future.
The ECJ referred to PAGO and noted that the threshold for establishing reputation is that the CTM is known by a significant part of the public concerned by the relevant product or service. This requires a court to take into account factors such as market share, intensity and geographical extent and duration of use, and the level of investment in promoting the brand. As PAGO established that a substantial part of the EU could mean a single member state, it followed that if a CTM has the necessary level of reputation in a single member state, its owner does not have to produce evidence of reputation in a different member state where the later application has been filed.
EU provisions on the requirement for genuine use of a mark, such as in Article 15(1) and 51 of the CTM Regulation (207/2009/EC), have a different objective unrelated to the protection of marks with a reputation, so they are not applicable in the context of Article 4(3).
The ECJ also found that, even if a national court were to find that the relevant public in the member state of the later application was not familiar with the CTM, it was still conceivable that a commercially significant part of the public might be familiar with the CTM and make a connection between it and the later mark. However, this link would not of itself establish the unfair advantage or detriment required by Article 4(3); the CTM owner would still need to prove that one of these was occurring or at serious risk of occurring, and that the owner of the later mark did not have due cause to use it. The more immediately and strongly the later mark brought the earlier mark to mind, the greater the likelihood that the current or future use of the later mark would create unfair advantage or detriment.
The decision confirms that a CTM owner may be able to rely on the reputation of its CTM in one member state in order to enforce it in another, as long as a commercially significant number of the target consumers in that other member state are familiar with the CTM and connect it with the later mark. What constitutes a commercially significant part of the relevant public in that other member state, and how it differs from the significant part discussed in PAGO, is not explained in the judgment and may be the subject of a future reference, but it seems to be a more stringent test than the commercially pertinent part test recommended by the Advocate General in this case.
Case: Iron and another v Unilever NV C-125/14.
First published in the November 2015 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.