Now we know: Austria is as significant as bits of Benelux

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
that court stayed the proceedings and referred the following questions for a preliminary ruling:
‘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?

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?’
Today the Court (Second Chamber) answered as follows:
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 [1999] 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.

Here's a Pago you won't be drinking ...
... but Pogo's in the drink here
Excited and rapid response from Catch Us If You Can !!! here
Now we know: Austria is as significant as bits of Benelux Now we know: Austria is as significant as bits of Benelux Reviewed by Jeremy on Tuesday, October 06, 2009 Rating: 5


  1. And of course there's always POG, which you can also drink, at least in Hawaii (see for details)

  2. In other words, the IPKat says, the Court has said "why didn't you read Case C‑375/97 General Motors [1999] ECR I-5421 before troubling us?"

    This is somewhat inaccurate, since par. 12 shows that the Austrian court was well aware of C-375/97. It was however unsure whether it made a difference that Austria is only one member state, whereas the Benelux covers multiple member states. Apparently it does not.

  3. Anonymous: you're right; my fault entirely. I should have added the word "sensibly" before the words "before troubling us".

  4. I still find it a little troubling that the law allows for the existence of trade marks that have no reputation whatsoever ... and hasn't the court strayed into factual territory at the end of the paragraph you quote?

  5. Perhaps because the Austrian court's question was badly-phrased the ECJ has completely ignored the point of the question. Can the trade mark proprietor have an Article 9(1)(c) claim in territories where his mark has no reputation? To put it another way, what is the terriorial scope of the relief that can be granted? Surely the proprietor cannot get an EU-wide injunction on the basis of reputation in only one Member State e.g. Luxembourg or Malta? But we now need another reference to address the real question.

  6. Although this decision refers to infringement under Article 9(1)(c), I assume that what was held also applies to Article 8(5) when filing an opposition?

  7. In GM / Yplon, the court found that..."in the Benelux territory, it is sufficient for the registered trade mark to be known by a significant part of the public concerned in a substantial part of that territory, which part may consist of a part of one of the countries composing that territory."
    Factually, Benelux is made of 3 territories. To apply the same finding to PAGO without considering the ratio Austria 1 to other 24 EC territories is just bad maths. Or is it? it certainly patched up quickly what was otherwise a gaping hole in CTM protection

  8. I now face an issue where relief is sought for a famous EUTM in Greece, although it is not well known in Greece. I am inclined to argue as a last defense that although this may be considered a famous EUTM, the conditions of protection will be hardly met.


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