CJEU on concept of 'reputation in the Community' in article 4(3) Trade Marks Directive
05-09-2015 Print this page
Mark with reputation of earlier Community mark: must have reputation in substantial part of the EU, may coincide with territory of single Member State
"Having regard to all the foregoing considerations, the answer to the first three questions is that Article 4(3) of Directive 2008/95 must be interpreted as meaning that, if the reputation of an earlier Community mark is established in a substantial part of the territory of the European Union, which may, in some circumstances, coincide with the territory of a single Member State, which does not have to be the State in which the application for the later national mark was filed, it must be held that that mark has a reputation in the European Union."
Criteria concerning genuine use are not relevant in order to establish the existence of a ‘reputation’
"The criteria laid down by the case-law concerning the genuine use of the Community trade mark are not relevant, as such, in order to establish the existence of a ‘reputation’ within the meaning of Article 4(3) thereof."
Proprietor of the earlier Community trade mark who already acquired a reputation in a substantial part of the territory of the European Union, but not with the relevant public in the Member State in which registration of the later national mark concerned by the opposition has been applied for, can oppose against a later national mark.
"Having regard to all the foregoing considerations, the answer to the fourth question is that, if the earlier Community trade mark has already acquired a reputation in a substantial part of the territory of the European Union, but not with the relevant public in the Member State in which registration of the later national mark concerned by the opposition has been applied for, the proprietor of the Community trade mark may benefit from the protection introduced by Article 4(3) of Directive 2008/95"
(1) when commercially significant part of public is familiar with the older mark and makes a connection with the later mark and there is an actual and present injury
"where it is shown that a commercially significant part of that public is familiar with that mark, makes a connection between it and the later national mark, and that there is, taking account of all the relevant factors in the case, either actual and present injury to its mark, for the purposes of that provision"
(2) or a serious risk that such injury may occur in the future
"or, failing that, a serious risk that such injury may occur in the future."
IPPT20150903, CJEU, Iron Smith v Unilever
C-125/14 - ECLI:EU:C:2015:539
