PAGO International GmbH v Tirolmilch registrierte Genossenschaft mbH.
Date: 2009-10-06
18. However, notwithstanding its wording and in the light of the overall scheme and objectives of the system of which Article 9(1)(c) of the regulation is part, the protection accorded to Community trade marks with a reputation cannot be less where a sign is used for identical goods and services than where a sign is used for non-similar goods or services (see, by way of analogy, Case C‑292/00 Davidoff  [2003] ECR I‑389, paragraphs 24 and 25 with regard, in particular, to Article 5(2) of the directive).
19. It must for that reason be accepted that Article 9(1)(c) of the regulation also benefits a Community trade mark with a reputation in respect of goods or services similar to those for which that mark is registered ( Davidoff , by way of analogy, paragraph 30).
The first question
21. The concept of ‘reputation’ assumes a certain degree of knowledge amongst the relevant public.
22. The relevant public is that concerned by the Community trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector (see, by way of analogy, General Motors , paragraph 24, with regard to Article 5(2) of the directive).
23. It cannot be required that the Community trade mark be known by a given percentage of the public so defined ( General Motors , by way of analogy, paragraph 25).
24. The degree of knowledge required must be considered to be reached when the Community trade mark is known by a significant part of the public concerned by the products or services covered by that trade mark ( General Motors , by way of analogy, paragraph 26).
25. In examining this condition, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it ( General Motors , by way of analogy, paragraph 27).
27. Territorially, the condition as to reputation must be considered to be fulfilled when the Community trade mark has a reputation in a substantial part of the territory of the Community (see, by way of analogy, General Motors , paragraph 28).
28. It should be noted that the Court has already ruled that, with regard to a Benelux trade mark, it is sufficient, for the purposes of Article 5(2) of the directive, that it has a reputation in a substantial part of the Benelux territory, which part may consist of a part of one of the Benelux countries ( General Motors , paragraph 29).
29. As the present case concerns a Community trade mark with a reputation throughout the territory of a Member State, namely Austria, the view may be taken, regard being had to the circumstances of the main proceedings, that the territorial requirement imposed by Article 9(1)(c) of the regulation is satisfied.
30. The answer to the first question referred is therefore that Article 9(1)(c) of the regulation 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 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.
The second question