CJEU rules on when reputation in the EU can be enforced

The Court of Justice of European Union (CJEU) in case C-125/14 Iron & Smith Kft. v Unilever NV has clarified the circumstances in which a CTM that has a reputation in the EU can be enforced against a national trade mark in one of the EU Member States.

Iron & Smith kft. (Iron) applied to register the figurative mark BE IMPULSIVE in Hungary for a range of feminine hygiene products. Unilever opposed based on its IMPULSE brand which is used in respect of a range of perfumed body sprays.

Unilever filed evidence to show that it had a significant number of sales of the IMPULSE product in the UK and Italy and, on this basis, was able to successfully argue that the IMPULSE trade mark enjoyed a reputation in the EU generally.

The Hungarian Intellectual Property Office found that even though the IMPULSE trade mark had little or no reputation in Hungary, Unilever was entitled to rely on the additional protection given to reputed marks even against a Hungarian national trade mark application.

Iron appealed this decision which was then brought before the CJEU for a ruling on this point of EU law.

The CJEU held that an earlier CTM has a reputation in the EU generally if a reputation exists in a substantial part of the EU, which might or might not coincide with the territory of a single member state. It does not matter if that member state is not the state in which the later application has been filed.

The decision clarifies that CTMs with a reputation can be enforced in the UK market even where the UK consumer does not know of the mark. On a practical level this could cause additional difficulties for businesses in clearing their new marks for use and registration in the UK.[:zh]The Court of Justice of European Union (CJEU) in case C-125/14 Iron & Smith Kft. v Unilever NV has clarified the circumstances in which a CTM that has a reputation in the EU can be enforced against a national trade mark in one of the EU Member States.

Iron & Smith kft. (Iron) applied to register the figurative mark BE IMPULSIVE in Hungary for a range of feminine hygiene products. Unilever opposed based on its IMPULSE brand which is used in respect of a range of perfumed body sprays.

Unilever filed evidence to show that it had a significant number of sales of the IMPULSE product in the UK and Italy and, on this basis, was able to successfully argue that the IMPULSE trade mark enjoyed a reputation in the EU generally.

The Hungarian Intellectual Property Office found that even though the IMPULSE trade mark had little or no reputation in Hungary, Unilever was entitled to rely on the additional protection given to reputed marks even against a Hungarian national trade mark application.

Iron appealed this decision which was then brought before the CJEU for a ruling on this point of EU law.

The CJEU held that an earlier CTM has a reputation in the EU generally if a reputation exists in a substantial part of the EU, which might or might not coincide with the territory of a single member state. It does not matter if that member state is not the state in which the later application has been filed.

The decision clarifies that CTMs with a reputation can be enforced in the UK market even where the UK consumer does not know of the mark. On a practical level this could cause additional difficulties for businesses in clearing their new marks for use and registration in the UK.[:ja]The Court of Justice of European Union (CJEU) in case C-125/14 Iron & Smith Kft. v Unilever NV has clarified the circumstances in which a CTM that has a reputation in the EU can be enforced against a national trade mark in one of the EU Member States.

Iron & Smith kft. (Iron) applied to register the figurative mark BE IMPULSIVE in Hungary for a range of feminine hygiene products. Unilever opposed based on its IMPULSE brand which is used in respect of a range of perfumed body sprays.

Unilever filed evidence to show that it had a significant number of sales of the IMPULSE product in the UK and Italy and, on this basis, was able to successfully argue that the IMPULSE trade mark enjoyed a reputation in the EU generally.

The Hungarian Intellectual Property Office found that even though the IMPULSE trade mark had little or no reputation in Hungary, Unilever was entitled to rely on the additional protection given to reputed marks even against a Hungarian national trade mark application.

Iron appealed this decision which was then brought before the CJEU for a ruling on this point of EU law.

The CJEU held that an earlier CTM has a reputation in the EU generally if a reputation exists in a substantial part of the EU, which might or might not coincide with the territory of a single member state. It does not matter if that member state is not the state in which the later application has been filed.

The decision clarifies that CTMs with a reputation can be enforced in the UK market even where the UK consumer does not know of the mark. On a practical level this could cause additional difficulties for businesses in clearing their new marks for use and registration in the UK.[:]

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Posted on: 22nd December 2015