The meaning of “Reputation in the Community”

United Kingdom

Summary

The European Court of Justice (“ECJ”) has confirmed that, for the purposes of Article 9(1)(c) of the Community Trade Mark (“CTM”) Regulation, a CTM may have a “reputation in the Community” and therefore be entitled to protection under Article 9(1)(c), if it has a reputation in only one Member State as this may constitute a “substantial part of the Community”.

Background

A reference was made by the Austrian Supreme Court on the meaning of “reputation in the Community” in Article 9(1)(c) of the CTM Regulation. In particular, the question referred asked whether a CTM, which has a reputation in one Member State only, could be considered to have a “reputation in the Community” in order to rely on the protection afforded by this provision. The case where the issue arose concerned a CTM for a fruit drink that was well known only in Austria. The CTM owner was alleging that the defendant was taking unfair advantage of this reputation by using a similar sign albeit on different goods.

In April 2009, Advocate General Sharpston presented an opinion that there must be a reputation in a “substantial part of the Community”, on the basis of the decision in General Motors [1999] Case C-375/97 (“General Motors”). The AG further advised that what constitutes a substantial part of the Community is not dependent on national boundaries but must be determined by assessing all the relevant circumstances of the case.

ECJ Decision

The ECJ first clarified the meaning of “reputation in the Community” for the purposes of Article 9(1)(c) of the CTM Regulation. The ECJ held there must be a certain degree of knowledge amongst the relevant public and the relevant public will depend on the product or service marketed. In agreement with the AG, the degree of knowledge is considered reached when a “significant part of the public concerned” knows of the CTM (General motors applied by analogy). In assessing whether a “significant part of the public” knows of the CTM, the court should consider all the factors of the case, including, the market share of the trademark, the geographical extent and duration of use, and the investment in promotion.

The ECJ went on to specifically state that a substantial part of the Community may consist of one Member State, following an earlier ECJ decision where it held that a substantial part of the Benelux territory may consist of just one of the Benelux countries (General Motors). The ECJ therefore concluded that to benefit from Article 9(1)(c) of the Regulation, the CTM must be known by a significant part of the public concerned in a substantial part of the Community, and one Member State may constitute such.

Comment

This decision reassures CTM owners that they may benefit from protection under the provisions of Article 9(1)(c) if the CTM has reputation in just one Member State. Following the AG’s opinion in April earlier this year, the concern had been raised that a CTM owner would also need to maintain a national trade mark in circumstances where their reputation is limited in geographical scope to just one Member State, in order to benefit from the right to prevent third parties using a similar sign to take advantage of their mark’s reputation. However, following the ECJ’s decision, this is less of a concern, although cases may be distinguished and there may be arguments about the degree of knowledge in the relevant country.

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