Iron & Smith kft v Unilever NV.
Date: 2015-09-03
17. In that connection, as regards Article 9(1)(c) of Regulation No 40/94, the Court held that the concept of ‘reputation’ assumes a certain degree of knowledge amongst the relevant public, which 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 (see judgment in PAGO International , C‑301/07, EU:C:2009:611, paragraphs 21 and 24).
18. 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 (judgment in PAGO International , C‑301/07, EU:C:2009:611, paragraph 25).
19. 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 and such a part may, in some circumstances, correspond to the territory of a single Member State (see, to that effect, PAGO International , C‑301/07, EU:C:2009:611, paragraphs 27 and 29).
20. Thus, if the reputation of an earlier Community trade 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, it must be held that that mark has a ‘reputation in the [European Union]’, within the meaning of Article 4(3) of Directive 2008/95, and the proprietor of that mark is not required to produce evidence of that reputation in the Member State in which the application for registration of the later national mark, which is the subject of an opposition, has been filed.
21. As regards the provisions concerning the requirement for genuine use of the Community mark in the European Union, such as Articles 15(1) and 51 of Regulation No 207/2009, those provisions pursue a different objective from that pursued by the provisions relating to the extended protection conferred on trade marks that have a reputation in the European Union, such as Article 9(1)(c) thereof (see, to that effect, judgment in Leno Merken , C‑149/11, EU:C:2012:816, paragraph 53). While the latter provision concerns conditions governing protection extended beyond the categories of goods and services for which a Community trade mark has been registered, the notion of ‘genuine use’ in Articles 15(1) and 51 of Regulation No 207/2009 expresses the minimum condition for use that all the marks must satisfy in order to be protected.
22. Furthermore, it should be noted that it is impossible to determine a priori, and in the abstract, what territorial scope should be chosen in order to determine whether the use of the mark is genuine or not (see judgment in Leno Merken , C‑149/11, EU:C:2012:816, paragraph 55).
28. Where the public concerned does not make a connection between the earlier Community mark and the later national mark, that is to say, does not establish a link between them, the use of the later mark does not, under Article 4(3) of Directive 2008/95, enable unfair advantage to be taken of, and is not detrimental to, the distinctive character or the repute of the earlier mark (see, by analogy, judgment in Intel Corporation , C‑252/07, EU:C:2008:655, paragraphs 30 and 31).
31. It is true that the existence of such a link, which must be assessed globally taking into account all factors relevant to the circumstances of the case (see judgment in Intel Corporation , C‑252/07, EU:C:2008:655, paragraph 41), is not sufficient, in itself, to establish that there is one of the types of injury referred to in Article 4(3) of Directive 2008/95 (see, by analogy, Intel Corporation , C‑252/07, EU:C:2008:655, paragraph 32). In order to benefit from the protection introduced by that provision, the proprietor of the earlier mark must adduce proof that the use of the later mark ‘would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark’ and therefore show that there is either actual and present injury to its mark for the purposes of Article 4(3) of Directive 2008/95 or, failing that, a serious risk that such injury may occur in the future. In such a case, it is for the proprietor of the later mark to establish that there is due cause for the use of that mark (see, by analogy, judgment in Intel Corporation , C‑252/07, EU:C:2008:655, paragraphs 37 and 39).
32. The existence of one of the types of injury referred to in Article 4(3) of Directive 2008/95, or a serious risk that such an injury will occur in the future, must be assessed globally, taking into account all factors relevant to the circumstances of the case (see, by analogy, judgment in Intel Corporation , C‑252/07, EU:C:2008:655, paragraph 68).
33. In that connection, it may be noted, in particular, that the more immediately and strongly the earlier mark is brought to mind by the later mark, the greater the likelihood that the current or future use of the later mark is taking unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier mark (see, judgment in Intel Corporation , C 252/07, EU:C:2008:655, paragraph 67).