The IPKat, pink-faced and fluffy-tailed after a day away from the smoke of Central London, has just encountered Case C‑301/07, PAGO International GmbH v Tirolmilch registrierte Genossenschaft mbH, today's ruling by the Court of Justice of the European Communities on a reference for a preliminary ruling from the Oberster Gerichtshof (Austria) some two and a quarter years ago.
The facts giving rise to the reference were these. Ever since 2001 PAGO owned a Community figurative trade mark for fruit drinks and fruit juices. The essential element of this mark was the representation of a green glass bottle with a distinctive label and lid. In Austria PAGO sold a fruit juice called ‘Pago’ in exactly those bottles, this mark accordingly being widely known there.
Tirolmilch, a local Austrian competitor, sold a fruit and whey drink called ‘Lattella’ there. That drink, initially sold in cartons, was subsequently packaged in glass bottles which in some respects resembled those in PAGO's trade mark. In its advertising, Tirolmilch used a representation which also showed a bottle next to a full glass. PAGO sued Tirolmilch for trade mark infringement and sought interim relief to stop Tirolmilch promoting, offering for sale, marketing or otherwise using its drink in its bottles and from advertising by means of a representation of the bottles together with a full glass of fruit juice. The Handelsgericht Wien granted the application, but on appeal PAGO’s application was dismissed by the Oberlandesgericht Wien. PAGO then appealed to the Oberster Gerichtshof, which felt there was no likelihood of confusion between Tirolmilch's bottles and PAGO’s trade mark since the labels on the bottles read respectively ‘Pago’ and ‘Lattella’, both of which were widely known in Austria.
PAGO however claimed that Tirolmilch was taking unfair advantage of the reputation of its mark in Austria without due cause. In this context the Oberster Gerichtshof was unsure what the words ‘has a reputation in the Community’ in Article 9(1)(c) of Regulation 40/94 actually meant in the light of the fact that PAGO's mark only had a reputation in Austria. Accordingly
‘1. Is a Community trade mark protected in the whole Community as a “trade mark with a reputation” for the purposes of Article 9(1)(c) of [the regulation] if it has a “reputation” only in one Member State?Today the Court (Second Chamber) answered as follows:
2. If the answer to the first question is in the negative: is a mark which has a “reputation” only in one Member State protected in that Member State under Article 9(1)(c) of [the regulation], so that a prohibition limited to that Member State may be issued?’
Article 9(1)(c) ... must be interpreted as meaning that, in order to benefit from the protection afforded in that provision, a Community trade mark must be known by a significant part of the public concerned by the products or services covered by that trade mark, in a substantial part of the territory of the European Community, and that, in view of the facts of the main proceedings, the territory of the Member State in question may be considered to constitute a substantial part of the territory of the Community.In other words, the IPKat says, the Court has said "why didn't you read Case C‑375/97 General Motors  ECR I-5421 before troubling us?" After all, if even a significant part of Benelux counts as a substantial part of the European Union's territory, the whole of Austria should be treated the same way. Merpel's still sulking because she wanted to hear some juicy arguments concerning the second question, which is much more fun.