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Advocate general: reputation of a trade mark enjoyed in one member state may be sufficient in another

A trade mark owner may be able to reply on the trade mark's reputation in an EU country in which the trade mark is not registered even when the trade mark is less well known there, according to a legal adviser to the EU's highest court.27 Mar 2015

Advocate General of the Court of Justice of the European Union (CJEU) Nils Wahl has published a legal opinion on a dispute between Unilever and a Hungary-based company, Iron & Smith, which had applied to register a trade mark at the Hungary Intellectual Property Office (HIPO).

Unilever said that Iron & Smith's trade mark, featuring the words 'be impulsive', could create confusion with its own Impulse brand of deoderant. Unilever holds a Community trade mark (CTM) for the brand.

The HIPO said that Iron & Smith could not register the trade mark because Unilever had a 5% market share in the UK and a 0.2% share in Italy. The reputation of the Community mark had therefore been proved in a substantial part of the European Union according to the HIPO, the AG opinion reported.

Iron & Smith appealed against the decision at the Budapest municipal court, which referred it to the Court of Justice of the European Union (CJEU) for a preliminary report.

In his opinion, Wahl said: “It may - depending on the specific mark which is described as enjoying a reputation and, accordingly, on the public concerned - be sufficient that a CTM enjoys a reputation in one member state, which does not need to be the state in which that provision is relied upon.”

However, where the CTM does not have a reputation in a member state, a company seeking to block another trade mark registration must show that a "commercially pertinent proportion" of that state will make a link between the existing CTM and the trade mark that another company is seeking to register, the AG said.

Trade mark expert Emily Swithenbank of Pinsent Masons, the law firm behind, said: "Community trade mark owners will be relieved to hear that their reputation in other member states which form a substantial part of the EU will be regarded as sufficient to challenge the local registration of a similar mark in a territory in which their reputation does not exist in order to avoid detriment being caused to its trade mark and consumer confusion."

"However, to assert that the new mark will take unfair advantage or be detrimental to the earlier mark, brand owners will still need to show that the strength of their reputation elsewhere is so high that a proportion of consumers in the member state would recognise the earlier right and therefore associate the new local mark with it," she said.

The opinions of advocates general are not binding on the CJEU, but are followed in the majority of cases.