Extent of use required for a Community trade mark to establish a reputation
The case of PAGO International GmbH v Tirolmilch Registrierte GmbH discussed what constitutes “reputation” within the European Union (EU) in respect of a Community trade mark (CTM). Owners of CTMs with a reputation in the EU can stop third parties taking unfair advantage of that reputation, or causing detriment to it.
PAGO owned a CTM for a green glass bottle device, which was used in relation to a fruit juice widely known in Austria. Tirolmilch started packaging its own drink in glass bottles which resembled the PAGO registration. PAGO brought an infringement action against Tirolmilch in Austria and sought an injunction throughout the EU, on the basis of its CTM registration and the reputation enjoyed by its mark in Austria.
The Austrian Supreme Court decided that for correct application of the EU law in this case it required guidance from the European Court of Justice (ECJ). It therefore asked the ECJ to clarify whether, if a mark has a reputation in only one country of the EU, this is sufficient to be deemed a reputation throughout the EU.
The ECJ concluded that if a CTM has a reputation in a substantial part of the EU, then it must be deemed as having a reputation in the whole EU. The ECJ ruled that in this case Austria did constitute a substantial part of the EU. Therefore, as PAGO’s CTM was well known within Austria, this was enough for the CTM to be deemed to have the required reputation in the EU.
The determination of reputation in a substantial part of the EU did not require at least a certain percentage of the EU public being aware of the reputation. The extent of the reputation could be assessed by taking into account any relevant factors, but in particular “the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it”. However, it is unclear from the decision on exactly what basis Austria was regarded to be a substantial part of the EU.
This decision is good news for owners of CTMs who only have a reputation in their trade mark in one EU country. However, depending upon the criteria applied and the circumstances, smaller EU countries might not be deemed to be a substantial part of the EU.
Julia House and Rosanne Jenkins
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