News Item

ECJ Ruling - reputation in only one Member State sufficient to satisfy "reputation in the Community" test for trade mark infringement

15 October 2009

.The European Court of Justice (ECJ) in the case of PAGO International GmbH v Tirolmilch registrierte Genossenschaft mbH (Case C-301/07) has ruled that a trade mark having a reputation in only one Member State can be sufficient to constitute ‘reputation in the Community’ for protection under Article 9(1)(c) of the Trade Mark Regulation. This Article affords extra protection from infringement to trade marks with a reputation.

PAGO, the proprietor of a Community trade mark (CTM) including a green glass bottle with a distinctive label and lid used for fruit juices, brought infringement proceedings against Tirolmilch for their use of a similar bottle and advertising. PAGO claimed that Tirolmilch was taking unfair advantage of the reputation of its CTM in Austria and sought an injunction restraining use throughout the entire Community.

The Austrian Court referred a question to the ECJ asking whether a Community trade mark can be protected in the whole Community as a “trade mark with a reputation” for the purposes of Article 9(1)(c) of the Regulation if it has a reputation only in one Member State.

The ECJ held that it could. They said that the CTM must be known by a “significant part of the public in a substantial part of the territory”, and that a single Member State may be considered to constitute a substantial part of the territory of the Community.

The ECJ’s clarification of the territorial extent of the ‘reputation’ required to take advantage of the extra protection afforded to marks with a reputation will be welcomed by trade mark owners who may only need to show reputation in one Member State or a limited part of the European Community in order to be able to gain a Community-wide injunction.

For more information, contact your usual Marks & Clerk attorney or Alison Chin at achin@marks-clerk.com.