It is unusual for a company that owns a brand which enjoys a certain notoriety to fall back on non-registered rights deemed of ‘more than mere local significance’. Usually such a brand has registered trade marks. For those instances, however, all is not lost.
The EU courts will recognise a business name, if the member state protects business names. The usual problem is providing sufficient evidence to show that a name is known outside its own locality; this is generally easier for goods than for services, which are perforce delivered locally unless franchised.
In the very recent decision of the Court of Justice of the European Union (CJEU), Case C-598/14 P EUIPO v Gilbert Szajner (5 April 2017), the non-registered trade mark of ‘more than mere local significance' under consideration, was the protection under French law of the business name of the French company ‘Forge de Laguiole’, known for its knives. Forge de Laguiole had applied to cancel the trade mark registration of the confusingly similar mark “LAGUIOLE”, on the basis of its earlier right in its business name. It succeeded in doing so in the EU Intellectual Property Office (EUIPO) but was appealed all the way to the CJEU.
The CJEU has given us guidance on the nature and extent of protection afforded to business names, as non-registered trade marks of 'more than mere local significance'. One has to assess the protection granted by the Members States’ national law (here French law) to business names at the time at which the court decision is delivered. Furthermore, as French law only protected the business name ‘Forge de Laguiole’ in respect to business activities actually pursued by that company, this was the extent of protection to be afforded under EU law. In determining ‘business activities’ of the company, the EU court needed to take into account not only the nature of the goods concerned, but also of their intended use, purpose, customers and the distribution channels of these goods.
Commercially a company should consider what it wants to achieve. The best strategy is not to think ‘what does the brand cover now?’ but to look into the future, and ask ‘what would we want to be able to use or license the brand for in 5-10 years’ time?’. Hence EU registered rights will always be better for long term strategic considerations than relying on present use under a business name or similar right of greater than mere local significance.