Cabinet Beau de Loménie
Reputed trademarks, a creation of the Trademark Directive and Regulation, are of paramount importance, and yet the qualification criteria are still ambiguous. In a decision rendered on September 3rd 2015, the Court of Justice of the European Union (CJEU) has given some welcome clarifications regarding these criteria. (CJEU, September 3rd 2015, Iron & Smith c. Unilever, Aff. C-125/14).
In this decision, Unilever, the owner of the Community trademark Impulse, filed an opposition against the Hungarian Trademark application « be impulsive » which it deemed similar to its own, though it designated different products. In order to do this, Unilever used Hungarian legal provisions that give wider protection to reputed trademarks, surpassing the principle of trademark specialty, as provided by the Directive in Article 4. §3.
Following this opposition, the Hungarian Office refused registration of the Hungarian trademark. The applicant then filed an appeal before the Hungarian Courts. The judges brought to light the central issue of this litigation: Unilever had not proven that its Community trademark was reputed in Hungary, but only that it was reputed in some Member States of the European Union. The Hungarian jurisdiction thus referred a question to the Court of Justice of the European Union (CJEU) in order to obtain clarifications regarding the notion of reputed trademark and the conditions under which it can be enforceable against third parties.
First of all, the CJEU recalled that a Community trademark is considered reputed in the EU if it is recognised in a substantial part of the territory of the European Union by a significant part of the public concerned. Nevertheless, the Court provided a very important clarification: the “substantial part” of the territory of the European Union may coincide with the territory of a single Member State.
Thus, the CJEU proceeded with a more flexible analysis of the conditions for the qualification of a reputed Community trademark and considered that it is of little importance whether the trademark is reputed in Hungary or not, as long as it can be validly qualified as a reputed Community trademark within the European Union. Indeed, the Court stated that the owner of the trademark at issue should not be compelled to prove that the trademark is reputed on the territory of the Member State where the application for the contested trademark was filed.
However, in such a situation, the owner of the Community trademark may benefit from the protection of reputed trademarks only if « a commercially significant part of the public in question recognises this trademark, establishes a connection between it and the later national trademark, and, bearing in mind all relevant factors to the case, there exists either an effective and actual violation of the Community trademark, or simply a serious risk that such a violation may take place in the future. »
Therefore, in order to assess the conditions for the enforcement of the reputed trademark in question against third parties, the CJEU adopted a practical approach, taking into account the actual situation in the concerned Member State where the owner of the reputed trademark seeks its protection.
The CJEU also mentioned that the requirement for serious use of a community trademark in the European Union has a different objective from the provisions regarding the wider protection conferred on reputed trademarks. Consequently, the criteria used to establish the existence of a serious use are not relevant to establish whether or not a trademark is reputed.
Thus, the CJEU made a clear distinction between the requirement for serious use of a trademark and establishing its reputed character. Regarding the serious use of a European trademark on the territory of the EU, it should be recalled that the Court considered, in a decision rendered on December 19th 2012, Leno Merken, (Aff. C. 149/11), that although it is clearly reasonable to expect a Community trademark to be used over a wider territory than a national trademark, it is not necessary for this usage to be geographically widespread in order to be qualified as “serious”, because such a qualification depends on the characteristics of the product or service concerned in the corresponding market. However, the trademark at issue must be used in accordance with its essential function and in order to maintain or create market share within the Community for the products or services designed by this trademark.
Finally, we must also recall that in order for a Community trademark to be considered distinctive it must have this character in all Member States of the EU, to the extent that if this is not the case in a single Member State, the registration of the trademark will be refused. Also regarding the evaluation of the distinctive character acquired through the use of a European trademark the entire territory of the European Union should be taken into account as it is at the moment of filing the application to register the Community trademark, with the exception of the part of the Community where the trademark already had that character ab initio (TPIUE, September 29th 2010, CNH Global, Aff. T. 378/07).