Easier to demonstrate that a Community Trademark is Well-Known
Background of the Dispute
Since 2001, Pago International GmbH (Pago) is the owner of a
Community shape mark for fruit juices with the representation of a
green glass bottle with a yellow label and a yellow lid. PAGO sells
fruit juices in Austria in such green bottles and its shape mark is
widely known in Austria.
Tirolmilch sells a fruit and whey drink, initially using cartons,
but later on glass bottles that resemble Pago's green bottle.
In the legal proceedings that followed between Pago and Tirolmilch
regarding the infringement of Pago's shape mark of the green
bottle, Pago relied on the wider protection of well-known
trademarks.
State of Affairs of Well-Known Trademarks
Under Article 9 paragraph 1 under c of the Community Trade Mark
Regulation (CTMR), a trademark that has a reputation in the
Community is not only protected against signs that are identical or
confusingly similar, but also against a third party taking unfair
advantage of, or causing detriment to, the distinctive character or
reputation of that well-known mark.
This gives rise to the question when a trademark is considered
to have a reputation in the Community? To be more
specific: in what part of the Community must this reputation be
demonstrated geographically? The test to determine this has first
been formulated in a ruling of the European Court of Justice (ECJ)
dated 14 September 1999 in General Motors/Yplon: To be
able to rely on this additional protection, it must be demonstrated
that the Community trademark is known by a substantial part of the
relevant public in a substantial part of the Community. In the past
years there have been many speculations on what would be considered
a 'substantial part' of the Community, from a geographic
point of view. It was usually assumed that this reputation would in
any case not have to be demonstrated in all countries of the
Community. However, it was not at all clear exactly how large the
scope of the reputation would need to be.
Reputation in One Member State Sufficient?
The ECJ sheds more light on this issue in its ruling in response to
the preliminary question from the Austrian court as to whether a
Community trademark is protected as a 'trademark with a
reputation' if it has a reputation only in one Member State. In
response thereto, the ECJ first repeated the test we know from the
General Motors judgment: the trademark must be known by a
substantial part of the public for which the products are intended,
in a substantial part of the territory of the Community.
The ECJ then determined that this case concerned a Community
trademark (the representation of the green bottle) known throughout
the territory of at least one Member State (Austria). The ECJ held
that - under the circumstances of this case - the territory of this
one Member State qualified as a substantial part of the Community.
As a result, its reputation in Austria was sufficient for
Pago's Community shape mark to be protected as a trademark with
a reputation throughout the Community.
Conclusion: Future of Trademarks with a Reputation
This ruling is favorable for European trademark
holders. After all, under circumstances it will be sufficient for a
trademark to have a reputation in the territory of only one Member
State in order to rely on the wider scope of protection that
trademarks with a reputation enjoy. Because of the Community aspect
of Community trademarks this ruling implies that the reputation of
a trademark in one (large) Member State may result in protection as
a trademark with a reputation throughout the Community, including
in Member States where this trademark is not known or not even used
(yet).
However, some comments are in order here. This case concerned a
trademark that was established to have a wide reputation throughout
the whole territory of one Member State (Austria). Had the
reputation of the trademark been less significant, the territory of
Austria alone might not have sufficed in order to qualify as a
'substantial part'. Further, with more than 8 million
inhabitants Austria forms about 5% of the total population of the
Community. This means that a reputation in European countries with
a (considerably) smaller population, such as Malta or Cyprus, will
probably not suffice to qualify as a 'substantial part' of
the Community.
It is thus not possible to derive from this judgment a general
rule that a reputation in one Member State is always sufficient.
Indeed, this would not be in line with the nature of Community
trademark law: the test is (and remains) whether a trademark is
known (by a substantial part of the public) in a substantial
part of the territory of the Community. This means that in
principle, national borders are not relevant when performing this
assessment. With this judgment the ECJ has indicated that in its
opinion, the territory of Austria may suffice in order to determine
the scope of this substantial part of the Community. This scope of
reputation is lower than has been assumed up until now. This
judgment will make it easier than was assumed before for a
trademark holder to prove that its Community trademark has
(acquired) a reputation in a substantial part of the Community.