Trade marks with a reputation are better protected than other trade marks. The owner of a trade mark with a reputation can oppose the use of a sign which is identical or similar to his trade mark, even for goods or services which are not at all similar to those for which the trade mark with a reputation is registered. This is possible in the event the use of that similar or identical sign, without due cause, (a) takes unfair advantage of, or (b) is detrimental to the distinctive character, or (c) to the repute of that trade mark. In a number of cases the European Court of Justice (ECJ) has clarified what is meant by this provision.
In its so-called PAGO case of October 2009, the ECJ clarified what it means by a “reputation”. According to the Court, the reputation in one Member State, in the case in question Austria, can suffice to be considered a trade mark with a reputation in the entire European Union. The impact of this decision cannot be underestimated. As a result, trade marks which only have a reputation in one single Member State enjoy the enlarged protection for trade marks with a reputation in Member States where they do not have a reputation at all.
The ECJ has also clarified the scope of protection of trade marks with a reputation. In two recent decisions it indicated what should be understood by the terms “unfair advantage” and “detriment to the distinctive character”.
The Court stated that in the first place it is required that the public establishes a link between the trade mark with a reputation and the sign, even though it does not confuse them. The Court even summed up a few criteria which can prove the existence of such a link, such as the strength of the reputation and the degree of similarity between the signs and/or the goods or services. In both cases, however, the Court provides additional conditions for an infringement.
In the so-called INTEL case of 27 November 2008, concerning the “detriment to the distinctive character” of the trade mark with a reputation, the ECJ decided that such detriment is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is notably the case when the earlier mark, used to arouse an immediate association with the goods and services for which it is registered, is no longer capable of doing so.
Besides the association which is established by the public between the trade mark with a reputation and the alleged infringing sign, the Court decided that the owner of the trade mark with a reputation must demonstrate that the economic behaviour of the average consumer of the goods or services for which the trade mark with a reputation is registered, has changed due to the use of the younger sign, or that there is a chance that this will happen in the future. In other words, the owner of the trade mark with a reputation must demonstrate a certain damage to his trade mark due to these of the litigious sign.
In the so-called BELLURE case of 18 June 2009, the ECJ interpreted the term “unfair advantage from the distinctive character or the repute” of a trade mark with a reputation in the sense that the alleged infringer takes advantage of the use of the sign which is identical or similar to the trade mark with a reputation.
Contrary to the INTEL case cited above, where a certain damage for the owner of the trade mark with a reputation must be demonstrated, the owner must demonstrate the unfair advantage for the alleged infringer without demonstrating a damage for himself.
The ECJ decided that the trade mark owner must demonstrate that the alleged infringer attempts to ride on the coat-tails of the trade mark with a reputation in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that trademark. The Court requires, in other words, besides the proof of the establishment of a link between the trade mark with a reputation and the sign by the public, that the trade mark owner demonstrates that the alleged infringer has taken advantage from such use and that he has done so intentionally.
In fact, this means that the trade mark owner will have to prove that the alleged infringer has parasitized his trade mark.
In these three decisions, the ECJ has defined the interpretation which must be given to the provisions with regard to trade marks with a reputation, namely the articles 2.20.1.c of the Benelux Treaty on Intellectual Property and article 9.1.c of the European Regulation on the Community Trade Mark, which contributes to legal certainty.
