Opinion of the Advocate General — ECLI:EU:C:2015:195
Date: 2015-03-24
Language of the case: Hungarian
Subject matter: Intellectual, industrial and commercial property;Patents
Procedure: Reference for a preliminary ruling
Origin: Hungary

Summary — Judgment of the Court (Fourth Chamber), 3 September 2015 1. Approximation of laws — Trade marks — Directive 2008/95 — Community trade mark having a reputation in the European Union — Definition — Geographical extent of the reputation — Relevance of the criteria concerning genuine use of the Community mark to establish the existence of a reputation — No relevance (European Parliament and Council Directive 2008/95, Art. 4(3)) 2. Approximation of laws — Trade marks — Directive 2008/95 — Community trade mark having a reputation in a substantial part of the territory of the European Union, but not with the relevant public in the Member State concerned by an application for registration of a later national trade mark — Conditions for the extended protection established by Article 4(3) of Directive 2008/95 (European Parliament and Council Directive 2008/95, Art. 4(3)) 1. Article 4(3) of Directive 2008/95 to approximate the laws of the Member States relating to trade marks 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 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) of that directive. (see para. 25, operative part 1) 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 to approximate the laws of the Member States relating to trade marks 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. (see para. 34, operative part 2)