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21 September 2015Trademarks

WIPR survey: Readers back CJEU in Unilever CTM row

Europe’s top court was correct to rule that Community trademark (CTM) owners can successfully oppose trademark applications in member states where they do not sell their product, provided they can demonstrate that their mark has a reputation in a substantial part of the EU, readers have said.

Last week, for our most recent survey, we asked whether the Court of Justice of the European Union (CJEU) was correct in its ruling in the Iron & Smith v Unilever dispute.

In total, 88% of respondents backed the CJEU’s ruling. Reacting to our question, one respondent said that a CTM is a “unitary right”.

“Either it is valid in every country or it is not. Either it can be used to prevent similar trademark applications in any country or it can be used in none. Any other situation would be absurd and would be massively to the detriment of the CTM,” the respondent said.

At the centre of the dispute was Iron & Smith’s application to trademark the phrase ‘Be impulsive’ at the Hungarian Intellectual Property Office (HIPO) in 2012.

Unilever opposed the national application on the grounds that it was too similar to a CTM it owns for its deodorant product called Impulse.

HIPO agreed and rejected the application, stating that the ‘Impulse’ CTM had established a reputation across the EU.

Iron & Smith appealed against the decision to the Fővárosi Törvényszék (Municipal Court of Budapest) and claimed that in addition to Impulse not being sold in Hungary, Unilever’s product only represented 5% of the deodorant market share in the UK and just 0.2% in Italy.

The Budapest court, however, was unsure of whether according to article 4(3) of Directive No. 2008/95, a CTM has to have a reputation within the relevant member state to oppose an application in that same country.

In response, the CJEU said: “If the reputation of an earlier CTM is established in a substantial territory of the EU ... which does not have to be the state in which the application for the later national mark was filed, it must be held that the mark has a reputation in the EU.”

Another WIPR reader who agreed with the decision said that from a trademark perspective the EU is considered as one jurisdiction.

“If one has reputation within the jurisdiction, he should enjoy the wider protection in the entire jurisdiction. Also, the owner of the CTM with reputation is entitled to expand the sales into all EU countries and therefore the additional protection is needed.”

For this week’s survey WIPR asks: “Certain provisions of the America Invents Act became three years old last week. Do you think the act has been positive for patent owners?”

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Trademarks
8 September 2015   The Court of Justice of the European Union has said that Community trademark owners can successfully oppose trademark applications in member states where they do not sell their product if they can demonstrate that their mark has a reputation in a substantial part of the EU.