AG ruling on trademark reputation may bring good news for Unilever
An Advocate General (AG) at Europe’s highest court has said that a right owner may be able to rely on a Community trademark's (CTM) reputation in one EU member state even when enforcing it in another.
In an opinion issued yesterday (March 24), Nils Wahl at the Court of Justice of the European Union (CJEU) was ruling on a dispute between multinational Unilever and Hungary-based Iron & Smith.
Unilever had opposed an application by Iron & Smith at the Hungarian Intellectual Property Office (HIPO) to register a colour trademark featuring the words ‘be impulsive’.
Unilever claimed the prospective mark could cause confusion with its deodorant brand Impulse, for which it holds a CTM.
The HIPO found that Unilever had sold large quantities of the brand and publicised it in the UK and Italy.
Despite these findings not relating to Hungary, the HIPO said the reputation of the CTM had been proved in a substantial part of the EU and consequently refused the application.
Iron & Smith appealed against the decision at the Fővárosi Törvényszék (Budapest Municipal Court), seeking an annulment of the decision. The court then referred the case to the CJEU for a preliminary ruling.
The court asked the CJEU if it is sufficient for a right owner to show that its CTM has a reputation in one member state when it is enforcing it in another member state.
In his opinion, AG Wahl said: “It may—depending on the specific mark which is described as enjoying a reputation and, accordingly, on the public concerned—be sufficient that a CTM enjoys a reputation in one member state, which does not need to be the state in which that provision is relied upon.”
Wahl added that where the earlier CTM does not enjoy a reputation in the member state, it is necessary to show that a “commercially pertinent proportion” of the relevant public in that member state will make a link with the earlier trademark.
The AG’s opinion provides guidance to the CJEU and the court is not obliged to follow its opinion, although it is thought to do so in around 80% of cases.
Unilever did not respond to a request for comment. Iron & Smith could not be reached for comment.
