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Thursday, 3 September 2015

Will Impulse shoppers be Impulsive? CJEU gives guidance

Five-and-a-bit months after the Opinion of Advocate General Wahl was published in Case C-125/14, [here, with Katnote here] in Iron & Smith Kft v Unilever NV, the Court of Justice of the European Union (CJEU) has delivered its decision, in response to a request for a preliminary ruling from the Hungarian Fővárosi Törvényszék (the Budapest Municipal Court).

The facts of the underlying dispute are as follows.  Relying on its earlier Community word mark (CTM) IMPULSE, leading brand owner Unilever NV opposed an application by Iron & Smith Kft. to register a colour figurative sign featuring the words ‘be impulsive’ as a Hungarian trade mark.  The Hungarian Intellectual Property Office (HIPO) found that Unilever had sold large quantities of and publicised the goods designated by its CTM IMPULSE (which seem to be some sort of perfumed and/or deodorant body spray) the United Kingdom and Italy, with that mark enjoying a 5% market share in the United Kingdom and a 0.2% market share in Italy. Even though this market share finding did not relate to Hungary, HIPO found that the reputation of the CTM had been proved in a substantial part of the European Union and refused the application, adding that a risk of the later mark taking unfair advantage could not be ruled out.

Iron & Smith applied to the Fővárosi Törvényszék for annulment of the decision to refuse its application. Entertaining doubts as to the correct interpretation of Article 4(3) of European Union's much interpreted and indeed much misinterpreted trade mark directive, the referring court asked the CJEU to give it a preliminary ruling on the following questions:
‘(1) Is it sufficient, for the purposes of proving that a Community trade mark has a reputation within the meaning of Article 4(3)  …, for that mark to have a reputation in one Member State, including where the national trade mark application which has been opposed on the basis of such a reputation has been lodged in a country other than that Member State?

(2) May the principles laid down by [the CJEU] regarding the genuine use of a Community trade mark be applied in the context of the territorial criteria used when examining the reputation of such a mark?

(3) If the proprietor of an earlier Community trade mark has proved that that mark has a reputation in countries other than the Member State in which the national trade mark 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?

(4) If the answer to [Question 3] is no, bearing in mind the specific features of the internal market, may a mark used intensively in a substantial part of the European Union be unknown to the relevant national consumer and therefore the other condition for the ground precluding registration in accordance with Article 4(3) of the Directive not be met, since there is no likelihood of detriment to, or unfair advantage being taken of, a mark’s repute or distinctive character? If so, what facts must the Community trade mark proprietor prove in order for that second condition to be met?’
AG Wahl advised the CJEU to answer the questions referred by the Fővárosi Törvényszék as follows:
(1) [Answering questions 1 and 2, correctly in this Kat's view] For the purposes of Article 4(3) ...  it may — depending on the specific mark which is described as enjoying a reputation and, accordingly, on the public concerned — be sufficient that a Community trade mark enjoys a reputation in one Member State, which does not need to be the State in which that provision is relied upon. In that regard, for the purposes of determining whether a reputation exists within the meaning of Article 4(3), the principles laid down in case-law in respect of the requirement to show genuine use of a trade mark are not relevant.

Commercially pertinent ...
(2) Where the earlier Community trade mark does not enjoy a reputation in the Member State in which Article 4(3) ... is relied upon, in order to prove that, without due cause, unfair advantage is taken of, or detriment is caused to, the distinctive character or repute of the Community trade mark for the purposes of that provision, it is necessary to show that a commercially pertinent proportion of the relevant public in that Member State will make a link with the earlier trade mark. In that regard, the strength of the earlier mark constitutes an important factor for the purposes of proving such association [This Kat thought that this is right too, though some big brand owners will not like it. However, he doubts that it will make a practical difference in many cases since, even if no unfair advantage is taken and no detriment inflicted, the chances of there being a likelihood of confusion will generally prevent the later mark being registered].
This Kat expected the CJEU to go along with AG Wahl's Opinion, which it more or less did. Today the CJEU ruled as follows:
1. Article 4(3) of Directive 2008/95 ... must be interpreted as meaning that, if the reputation of an earlier Community mark 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, which does not have to be the State in which the application for the later national mark was filed, it must be held that that mark has a reputation in the European Union. The criteria laid down by the case-law concerning the genuine use of the Community trade mark are not relevant, as such, in order to establish the existence of a ‘reputation’ within the meaning of Article 4(3) thereof [thus endorsing and paraphrasing the advice given by AG Wahl].

... or commercially significant?
2. If the earlier Community trade mark has already acquired a reputation in a substantial part of the territory 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 trade mark 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 [again, ruling along much the same lines as AG Wahl proposed, but going into more detail by stipulating the need for actual or highly likely damage].
It is not known at this stage whether the CJEU understands there to be difference between a "commercially pertinent proportion" of the relevant public or a "commercially significant part" of it. Nor can this Kat guess whether the terminology of making a "link" and making a "connection" will be a matter for future analysis -- though it should not be since it is clear from para [28] that the CJEU is using the terms synonymously ["link" is perhaps being phased out, since it's only used twice in the ruling, as against eight uses of "connection"].

What makes people sweat here and here
What makes people smell here and here

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