1. 5th Liaison Meeting on Trade Marks
Reputation in the EU
5th Liaison Meeting on Trade Marks
Alicante June 2010

2. Question
How should national offices apply Article 4(3) of the Directive 2008/95/EC, when a holder of a CTM claims that a national registration takes unfair advantage of or is detrimental to the distinctive character or repute of a “reputed CTM”?

3. Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark
Article 9
Rights conferred by a Community trade mark
1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
[…]
(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.

4. Further grounds for refusal or invalidity concerning
DIRECTIVE 2008/95/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 22 October 2008
to approximate the laws of the Member States relating to trade marks (Codified version)
Article 4
Further grounds for refusal or invalidity concerning
conflicts with earlier rights
3. A trade mark shall furthermore not be registered or, if registered, shall be liable to be declared invalid if it is identical with, or similar to, an earlier Community trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier Community trade mark is registered, where the earlier Community trade mark has a reputation in the Community 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 Community trade mark.

5. 4. Any Member State may, in addition, provide that a trade
DIRECTIVE 2008/95/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 22 October 2008
to approximate the laws of the Member States relating to trade marks (Codified version)
Article 4
4. Any Member State may, in addition, provide that a trade
mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:
(a) the trade mark is identical with, or similar to, an earlier
national trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services
which are not similar to those for which the earlier trade
mark is registered, where the earlier trade mark has a reputation in the Member State concerned 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 trade mark;

6. Rights conferred by a trade mark
DIRECTIVE 2008/95/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 22 October 2008
to approximate the laws of the Member States relating to trade marks (Codified version)
Article 5
Rights conferred by a trade mark
1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
[…]
2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

7. The Requirements Reputation
Association in the minds of the relevant public
Use without due cause
Detriment or unfair advantage

8. The Concept of Reputation
Case C-375/97, General Motors Corporation vs Yplon SA
Reputation is a ”knowledge threshold requirement”, cf. p. 22
”…its first condition implies a certain degree of knowledge of the earlier trade mark among the public”, cf. p. 23
“The degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark”, cf. p. 26
Territorially, the condition is fulfilled when, in the terms of Article 5(2) of the Directive, the trade mark has a reputation 'in the Member State‘. In the absence of any definition of the Community provision in this respect, a trade mark cannot be required to have a reputation 'throughout‘ the territory of the Member State. It is sufficient for it to exist in a substantial part of it.

9. The Concept of Reputation
C-301/07, PAGO International GmbH vs Tirolmilch registrierte Genossenschaft mbH
“The concept of ‘reputation’ assumes a certain degree of knowledge amongst the relevant public.”, cf. p. 21
“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 (General Motors, by way of analogy, paragraph 26).”, cf. p. 24
“Territorially, 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 (see, by way of analogy, General Motors, paragraph 28).”, cf. p. 27
“As the present case concerns a Community trade mark with a reputation throughout the territory of a Member State, namely Austria, the view may be taken, regard being had to the circumstances of the main proceedings, that the territorial requirement imposed by Article 9(1)(c) of the regulation is satisfied.”, cf. p. 29

10. The Concept of Association
“It is only where there is a sufficient degree of knowledge of that mark that the public, when confronted by the later trade mark, may possibly make an association between the two trade marks, even when used for non-similar products or services, and that the earlier trade mark may consequently be damaged”, cf. Case C-375/97, General Motors Corporation vs Yplon SA, p. 23
“It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.”, cf. C-252/07, Intel Corporation Inc. vs CPM United Kingdom Ltd, p. 48

11. The Relevant Public
C-252/07, Intel Corporation Inc. vs CPM United Kingdom Ltd:
“33      The public to be taken into account in order to determine whether registration of the later mark may be declared invalid pursuant to Article 4(4)(a) of the Directive varies depending on the type of injury alleged by the proprietor of the earlier trade mark.
34      First, both a trade mark’s distinctiveness and its reputation must be assessed, first, by reference to the perception of the relevant public, which consists of average consumers of the goods or services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect (as regards distinctive character, see Case C‑363/99 Koninklijke KPN Nederland [2004] ECR I‑1619, paragraph 34; as regards reputation, see, to that effect, General Motors, paragraph 24).
35      Accordingly, the existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect.
36      Secondly, as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.”

12. Thank you for your attention!
Conclusions
A CTM may be a ”reputed CTM” even if it has only acquired a reputation in a single Member State, cf. The PAGO-case.
An “association” or “link” between the trademarks can only occur if the CTM has a reputation in the Member State, in which the later trademark is registered.
The requirement for “detriment” or “unfair advantage” is dependent on the “association” or “link” between the trademarks – no injury of the “reputed CTM” if the CTM has not acquired a reputation in the Member State of the later trademark.
Thank you for your attention!