The matter at hand

Iron & Smith applied for the registration as a Hungarian national mark of the word/figurative sign ‘be impulsive’. Unilever opposed this application on the basis of its earlier Community trade mark ‘Impulse’, invoking the additional protection granted to trade marks with a reputation. In the opposition proceedings it was found that the invoked mark had a reputation in a substantial part of the European Union, but not in Hungary.

On grounds of Article 4(3) of the Trade Mark Directive a trade mark shall not be registered if it is similar to an earlier Community trade mark where the earlier mark has a reputation in the Community and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.

The judgment of the ECJ

With reference to its judgment in Pago, the ECJ first of all confirms that, “if the reputation of an earlier Community trade mark is established in a substantial part of the territory of the European Union […], it must be held that that mark has a ‘reputation in the [European Union]’, and the proprietor of that mark is not required to produce evidence of that reputation in the Member State in which the application for registration of the later national mark, which is the subject of an opposition, has been filed” (paragraph 20). This implies that a mark can enjoy the protection of a trade mark with a reputation in a part of the territory where there is not even evidence of genuine use (paragraph 21).

However, when assessing whether use of the opposed mark enables unfair advantage to be taken of the earlier mark or is detrimental to it, it is required to look at the public’s perception in the part of the territory where the opposed mark is applied for – as it must be assessed whether there is a serious risk of such unfair advantage or detriment in that part of the territory.

The ECJ comes to this finding by first considering that where “the earlier Community trade mark is unknown to the relevant public in the Member State in which the registration of the later national mark is applied for, the use of the national mark does not, in principle, enable unfair advantage to be taken of it […] and is not detrimental to [it]” (paragraph 29). The ECJ then goes on to consider that it is however “conceivable that a commercially significant part of the relevant public in the Member State where the opposed mark is applied for may be familiar with it and make a connection between that mark and the later national mark” (paragraph 30). Then, under those circumstances, “the proprietor of the earlier mark must adduce proof that the use of the later mark ‘would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark’ and therefore show that there is either actual and present injury to its mark for the purposes of Article 4(3) of the Trade Mark Directive or, failing that, a serious risk that such injury may occur in the future” (paragraph 31).