Trademark with reputation is a trademark extensively and permanently known by a significant part of the interested public.
Notion of trademark with reputation in the European Union trademark
With regard to the notion of “reputation” in the European Union trademark,
“it assumes a certain degree of knowledge amongst the relevant public, which must be considered to be reached when the Community trademark (now European Union trademark) is known by a significant part of the public concerned by the products or services covered by that trademark” (judgment of the Court of Justice, 3 September 2015 in case C-125/14, paragraph 17).
The Court of Justice, moreover, 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” (judgment in exam, paragraph 18).
When is the reputation of an European Union trademark proven?
The judgment of the Court of Justice C-125/14 of 3 September 2015
answers some questions concerning when the reputation of an European Union trademark can be considered demonstrated.
The questions are:
Is it sufficient, for the purpose of proving that an European Union trademark has a reputation, for that mark to have a reputation in one Member State or is it necessary that such proof involve more States of the European Union and, in affirmative, which of them?
Answer: coming to the first question – if the reputation can be proven even if existing only in reference to a single Member State – the Court of Justice states that
“territorially, the condition as to reputation must be considered to be fulfilled when the Community trademark (now 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” (judgment in exam, paragraph 19)
If the proprietor of an earlier Community trademark has proved that that mark has a reputation in countries other than the Member State in which the national trademark application has been lodged – which cover a substantial part of the territory of the European Union – may he also be required, notwithstanding that fact, to adduce conclusive proof in relation to that Member State?
Answer: the answer to the first question also derives from the answer to the second question, because
“thus, if the reputation of an earlier Community (now 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” (judgment in exam, paragraph 20).