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What applies if a EU trademark having a reputation did not acquire a reputation with the local public in a state?

What applies if a EU trademark having a reputation did not acquire a reputation with the local public in a state?

A European trademark having a reputation in the EU will not always be recognised in all EU member states. Indeed, the trademark may not have a reputation at all in some member states. According to the EU Trademarks Directive (article 4 paragraph 3), an EU trademark having a  reputation enjoys extra broad protection, including against local trademarks, as long as the public establishes a link between that local mark and the mark having a reputation. But why would such broad protection against local trademarks apply in a member state where the EU trademark has acquired very little or no reputation at all? If the local public does not recognise the trademark, after all, neither can any link be established between the local trademark and the EU trademark having a reputation. Under these circumstances is there still a justification for  the broader protection of the EU mark having a reputation?

This question was raised in the judgement of 3 September 2015 of the Court of Justice (ECJ). There, the ECJ acknowledges that the broader protection of a EU trademark having a reputation can in principle vary from one member state to the next, and can even be lacking if the local public does not recognise that EU mark at all.

Given the reputation of the trademark in the EU, the ECJ in its judgement rules that there must be a certain minimum level of public recognition in the member state if the holder of the EU trademark having a reputation wishes to appeal, in this member state, to the broader protection of a EU mark having a reputation.

The underlying dispute concerned the following. Unilever has an EU trademark ‘Impulse’ for cosmetics and the like. This trademark has undisputedly acquired a reputation in the UK and Italy. In Hungary a third party registered the national figurative mark ‘be impulsive’ for other, non-similar products.

Unilever launched an opposition in Hungary at the Hungarian trademark office against the registration of that national figurative mark ‘be impulsive’, with an appeal to the acquired reputation of its EU trademark. The Hungarian trademark office ruled that, on the basis of advertising efforts and sales volumes of Unilever in Italy and the UK, this trademark a reputation in a considerable part of the territory of the EU and is thus a EU mark having a reputation. In addition, it determined that the risk existed that the local figurative mark ‘be impulsive’ might evoke the mark ‘Impulsive’ in the minds of the Hungarian public, so that a real threat of trademark infringement existed. This led to the opposition being upheld.

The applicant for the Hungarian trademark ‘be impulsive’ filed an appeal against this. The Hungarian court of appeal then placed preliminary questions before the ECJ. The Court answered those questions in its judgement.

First, the Court repeated what it had already said in the Pago judgement of 2009 concerning the criteria for being a EU trademark having a reputation:

  • The concept of having a reputation amongst the relevant public assumes a certain degree of reputation acquired with a significant part of the public for which the goods/services offered under that trademark are intended.
  • In assessing this, the national court must consider all relevant circumstances of the case, including in particular:
    • The market share of the trademark;
    • The intensity, geographical scope and duration of use;
    • Scope of marketing investments in the trademark.
  • Where appropriate, a considerable part of the EU may correspond with the territory of a single member state.

After that, the ECJ considers in the ‘Impulse judgement’ that in the context of a local opposition procedure against a national trademark application, the holder of an older EU trademark having a reputation does not need to prove that his trademark (also) acquired a reputation in the territory of the member state where the opposition is brought.

Subsequently, the Court addresses the question of whether an older EU trademark having a reputation can also block the registration of a younger national trademark if the EU mark having a reputation did not acquire that reputation amongst the relevant public in the member state where the younger trademark is lodged.

The broader protection of a EU trademark having a reputation under article 4 (3) EU Trademarks Directive implies that this trademark can have younger national trademarks for non-similar products declared null and void or can block the registration of these if, through the use of the national trademark without due cause the younger mark  takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU mark having a reputation.

In the Intel judgement of 2008, the Court already determined that if the relevant public does not compare the younger and older trademarks and therefore does not link these, the use of the younger trademark will enjoy no unfair advantage of, or is not detrimental to, the distinctive character or the repute of the younger mark.

However, according to the Court, this does not detract from the fact that in the member state of the younger trademark application ‘a commercially not insignificant part of the relevant public’ may indeed recognise the older EU trademark having a reputation and be able to connect it with the younger national trademark. The holder of the older EU trademark must then prove these facts.

Thus the Court gives the holder of the EU trademark having a reputation a boost. Even if the trademark does not enjoy the same degree of reputation in the relevant member state as in other member states, nonetheless recourse may be taken to the broader protection of the EU trademark having a reputation against a national trademark application.

The turning point is seen at being able or unable to prove that a commercially not insignificant part of the national public recognises the older EU trademark and associates it with the younger national trademark, or a serious threat of this exists for the future.

If this evidence can be provided, the EU trademark that acquired a reputation in the territory of the EU, despite the minimal reputation acquired in that member state, nonetheless enjoys the broader protection of a EU mark having a reputation. If such evidence cannot be provide, the trademark has to do without that broader protection. The normal protection as a trademark against identical or confusingly corresponding younger signs/marks can, however, continue to be called upon without abridgement.

When, then, does a situation exist in which a ‘commercially not insignificant part of the national public recognises the older EU trademark having a reputation and associates it with the younger national trademark’?  And when can it be assumed that there is a serious risk of this in the future?  It will be up to the national court to assess this case by case.

If, on the basis of the circumstances of the case, the court assumes minimal recognition, the holder of the trademark having a reputation must still prove the infringement, consisting in the fact that through the use of the younger trademark it takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU mark having a reputation, or else that a serious threat exists that this may be the case in the future.

From the perspective of national opposition or nullity proceedings, the EU trademark having a reputation therefore indeed benefits from this judgement. For a successful local opposition, after all, it need not be proven that a substantial proportion of the relevant public in that country indeed recognises the trademark. Given the reputation of the trademark in the EU, proof of a lesser degree of recognition or else the serious threat thereof in the future can suffice.

By Jaap Kronenberg

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