A Community Trade Mark (CTM) with a reputation in only one Member State of the European Union may still be protected against third parties taking unfair advantage of it, or causing it detriment.  The European Court of Justice (ECJ) in Pago v Tirolmilch has said that if the mark is known by a significant number of the relevant public, it may not matter that those people are all in one Member State.

Background

Owners of trade marks with a reputation in the Community can stop third parties taking unfair advantage of that reputation, or causing detriment to it.  The difficulty for Pago was that the mark in question, a picture of a distinctive bottle, next to a glass, was used on a Pago fruit drink which only had a reputation in Austria.  Was that enough to gain protection as a "trade mark with a reputation" throughout the whole Community?

The ECJ judgment

The ECJ confirmed that if the mark was known by a significant number of people in the EU, its reputation could be protected.  That number did not have to be a given percentage of the relevant public.  The extent of the reputation could be assessed by taking into account the market share held by the mark, how much, how widely, and how long it had been used, and how much the owner had spent on promoting it.

The ECJ pointed out that it had already said that a mark could have reputation in a significant part of Benelux, even if it was only known in part of one of the Benelux countries.  By analogy, a reputation in one Member State of the Community could amount to a reputation in a significant part of the Community as a whole.

Our Comment

The judgment clarifies an issue which has been of concern for some time.  However, it leaves unanswered two further questions.  We do not know whether any injunction granted in respect of a mark which only enjoys reputation in one Member State can be limited to that Member State alone.   Nor do we know how easy it will be to prove damage to a mark with a reputation if the alleged damage is taking place outside the Member State where the reputation exists.  The judgment may therefore have a more limited impact than appears at first sight.

 

For more information, email our United Kingdom Head of Brands Group Nick Baker at nbaker@iprights.com.