When is it proven the reputation of a Reform European Union Trademark?
The judgement of the Court of Justice C-125/14 of 3 September 2015 gives an answer to some questions concerning when the reputation of a European Union Trademark can be considered as demonstrated.
The questions are:
- Is it possible to affirm the reputation of a European Union Trademark when it is demonstrated only in a single State or it is necessary that the evidence of the reputation necessarily involve more Countries of the European Union and, in the latter, how many and which?
- Is it possible to oppose a national trademark if you are owner of an earlier European Union Trademark with reputation but the reputation does not concern the State of the national mark that you want to oppose?
Notoriety European Union Trademark
First of all, with regard to the concept of “reputation”, “assumes a certain degree of knowledge amongst the relevant public, which must be considered to be reached when the European Union Trademark is known by a significant part of the public concerned by the products or services covered by that trademark” (C-125/14, paragraph 17).
The Court of Justice, besides, specifies that “in examining this condition, the national Court must take into consideration all the relevant facts of the case, in particular the market share held by the trademark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it” (C-125/14, paragraph 18).
Coming to the first question – whether the reputation can be proved even if existing in reference to a single Member State – the Court of Justice states that “the condition as to reputation must be considered to be fulfilled when the European Union Trademark has a reputation in a substantial part of the territory of the Community and such a part may, in some circumstances, correspond to the territory of a single Member State” (C-125/14, paragraph 19).
From the answer to the first question comes the answer to the second question, because “if the reputation of an earlier European Union Trademark is established in a substantial part of the territory of the European Union which may, in some circumstances, coincide with the territory of a single Member State…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”. (C-125/14, paragraph 20).
Notoriety European Union Trademark
Having seen that the reputation of a European Union Trademark may also cover a single Member State and that, if the reputation is demonstrated, it is not necessary that it also exists in the State in which the opposed trademark application was filed, we must clarify another point.
Article 4(3) of the Directive 2008/95/EC of the European Parliament of the Council of 22 October 2008, states that “A trademark shall furthermore not be registered …if it is to be, or has been, registered for goods or services which are not similar to those for which the earlier European Union Trademark is registered, where the earlier European Union Trademark has a reputation in the community and where the use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier European Union Trademark”.
When you have proved the reputation of the Community trademark but that reputation does not involve the State in which the national trademark you want to oppose was filed, can we affirm that the proprietor of the national trademark would take unfair advantage of the reputation of the trademark if the well-known mark is not known in that State?
The Court of Justice says the following: “if the earlier Community trademark has already acquired a reputation in a substantial part of the European Union, but not with the relevant public in the Member State in which registration of the later national mark concerned by the opposition has been applied for, the proprietor of the Community trademark may benefit from the protection introduced by article 4(3) of Directive 2008/95 where it is shown that a commercially significant part of that public is familiar with that mark, makes a connection between it and the later national mark, and that there is, taking account of all the relevant factors in the case, either actual and present injury to its mark, for the purposes of that provision or, failing that, a serious risk that such injury may occur in the future”.
Many people believe it is very complicated to register a trademark.
IActually, it is very simple if you appoint an expert in the field of trademarks.
We explain here below how to do, step by step:
Through the specific form, you can ask for a free of charge check of some of the registrability requirements of your trademark.
Our team will confirm if your trademarks seems to have a distinctive character and appears to be not contrary to the law, public policy or principles of morality. You will receive the result of this check by e-mail.
Apart from the exit, positive or negative, this check is free of charge and not binding for future steps with this firm.
In the event the free of charge check is positive, you will find attached to our e-mail two forms, one for proceeding with a similarity trademark search (optional, but strongly recommended by the firm in order to be aware of the existence of prior identical or similar trademarks conflicting with the sign of your interest) and the other for proceeding straight away with the filing of the trademark application, in the event you wish to file the application without performing any search.
Contextually you will be informed on the exact amount to pay through a bank transfer, depending you are a natural or a legal person (counting VAT or not), taking into account that the cost for filing an Italian trademark is the following:
- € 472 in one class, plus 4% of so called CAP to be calculated exclusively on the Attorney’s fees;
- € 50 for each additional class, plus 4% so called CAP to be calculated exclusively on the Attorney’s fees.
Method of payment:
- Bank transfer to::Banca Popolare di Milano – Ag.di Roma n. 00253
- IBAN: IT87D0558403202000000021963
- SWIFT: BPMIITM1253
As soon as we receive your instructions for the filing, together with a copy of the payment, we will prepare the documents for the filing.
In order to positively conclude the proceeding, you will be requested to send the Power of attorney singed in original by you to the following address:
- Avv. Eva Troiani
- Via Pasquale Revoltella 35
- 00152 Roma
Once filed the trademark application, you will receive a copy by e-mail.
- Tel. / fax: 06 58233422