Automatic pan-EU injunctions for infringements of trade marks with a reputation?

Trade marks with a reputation enjoy a broader scope of protection than the ‘average’ mark. For infringement to be found, the goods or services need not be similar, and a faint degree of similarity between the signs is sufficient. But does the scope of protection go so far that the owner can obtain an EU-wide injunction in a situation in which a reputation is established and infringement occured only in a part of the EU? A recent judgment from the Higher Regional Court of Hamburg shows that the CJEU’s case law on this issue is not unequivocal.

Background

HUGO BOSS Trade Mark Management GmbH & Co. KG (‘Hugo Boss’) owns EU trade mark BOSS, registered on 29 January 2009, inter alia, for ‘clothing for men, women and children’ in class 25.

The defendant, a discount clothing store, offered the following hoodies and sweatpants for sale:

Hugo Boss applied for a preliminary EU-wide injunction, claiming infringement of a trade mark with a reputation under Art. 9(2)(c) EUTMR. The District Court of Hamburg granted the EU-wide preliminary injunction. The defendant appealed to the Higher Regional Court.

The Higher Regional Court’s decision

The Higher Regional Court dismissed the appeal. It confirmed that the use of the slogans 'THE REAL BOSS' and 'I AM THE BOSS' infringed Hugo Boss’ well-known EU trade mark BOSS.

The Court accepted that the BOSS mark enjoys a reputation in Germany, having been used in the market to a significant extent for a long period of time. As per the CJEU’s Iron & Smith judgment (discussed here), an EU trade mark is considered to enjoy a reputation in the entire EU, per Art. 9(2)(c) EUTMR, if a reputation has been established for a substantial part of the EU, which can even mean a single Member State. Here, the Higher Regional Court considered Germany to be a substantial part of the EU.

The judges also found the signs to be sufficiently similar for consumers to establish a link between them. The element 'BOSS' in the 'THE REAL BOSS' and 'I AM THE BOSS' is deemed to occupy an independent distinctive role because consumers perceive it as a separate trade mark within the signs. Additionally, the word 'BOSS' is written in capital letters, just like Hugo Boss uses it on clothing. The overall impression of the contested signs is not such as to distract from the word 'BOSS'.

The Court accepted that the contested uses take unfair advantage of the reputation of the BOSS trade mark. The judges were of the view that the use of 'BOSS' on the defendant’s clothing was intended to draw the consumers’ attention to that word, thereby misappropriating the earlier mark’s advertising and communication functions. The defendant was deemed to ride on the coat-tails of the BOSS mark and to benefit from its reputation in the marketing of its goods. The Higher Regional Court did not see any reason for cause for the exploitation of the BOSS trade mark.

Having found liability, the judges proceeded to confirm an EU-wide preliminary injunction. No statute was cited for this, but it is assumed that the requirements of Art. 126(1) EUTMR had been fulfilled. According to the CJEU in combit Software (discussed here), an injunction (on the basis of a likelihood of confusion) must be granted EU-wide, unless the defendant can establish that there is no likelihood of confusion in a part of the EU.

The defendant argued that a pan-EU prohibition is only warranted if a non-insignificant part of the relevant public knew the earlier mark in the territory in which it is not considered to be well-known, and also establishes a link between the earlier mark and the contested uses of that sign. The Higher Regional Court rejected this argument by referring to para. 52 of the CJEU’s Ornua decision, which said:--

That case-law ensures that the proprietor of an EU trade mark can either be entitled to the extended protection conferred by [Art. 9(2)(c) EUTMR] throughout the European Union, or cannot rely on it at all. Accordingly, the scope of the protection conferred by any EU trade mark has a uniform character on the entire territory of the European Union.

The Court concluded that an injunction based on a trade mark with a reputation can only be granted for the entire EU or not at all. Since an infringement was found for the German public, the judges granted a pan-EU preliminary injunction.

Comment

The decision raises the question whether the geographical scope of an injunction, which is based on a trade mark with a reputation, must always be granted for the entire EU.

In Iron & Smith the CJEU found, as the Higher Regional Court of Hamburg rightly stated, that an EU trade mark enjoys a reputation throughout the EU “if the reputation of an earlier [EU] 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” (at para. 20).

However, this statement only concerns the requirement of a “reputation in the [European] Union”. It does not concern the questions whether the relevant public establishes a link throughout the EU, or whether one of the types of injury mentioned in Art. 8(5) EUTMR and Art. 9(2)(c) EUTMR exists. In order for an EU trade mark that has a reputation in one Member State to be infringed in another in which it does not have a reputation, the CJEU required that (i) a commercially significant part of the other Member State’s public be familiar with the earlier mark, (ii) such public makes a connection between the earlier mark and the contested sign, and (iii) there is either actual and present injury to the earlier mark or a serious risk that such injury may occur in the future (Iron & Smith at para. 34).

This Kat does not understand the Iron & Smith judgment to mean that a well-known trade mark is deemed to be infringed in the entire EU simply because the mark is known and the infringement took place in a substantial part of the EU. Rather, in order to issue a pan-EU injunction, courts seem to be required to ascertain whether the earlier mark is sufficiently known in the territory in which a reputation has not been proven, this so that the public establishes a link between the signs, and one of the types of injury mentioned in Art. 8(5) EUTMR and Art. 9(2)(c) EUTMR is present.

These conditions appear at first glance at odds with para. 52 of the CJEU’s Ornua judgment cited above. However, the statement in that case was made in the context of whether a trade mark has a reputation in the entire EU, even though it is just known within a substantial part. The statement did not concern the further requirements, namely a link between the signs and the injury required by Art. 8(5) EUTMR and Art. 9(2)(c) EUTMR. It is doubtful, therefore, whether the CJEU in the Ornua judgment intended to change its case law on EU-wide claims, this in a ruling rendered less than two years after the Iron & Smith decision. A preliminary ruling from the CJEU would help to clarify the situation.