PAGO International GmbH v Tirol Milch registrierte Genossenschaft mbH (Opinion of AG Sharpston for the ECJ; C-301/07; 30.04.09)

Pago owned a complex CTM for fruit drinks and fruit juices. The mark included a representation of a green glass bottle (used by Pago for a number of years) with a distinctive label and cap next to a full glass of fruit drink.

Tirol Milch marketed in Austria a fruit and whey drink called Lattella packaged in glass bottles whose design resembled that depicted in Pago’s CTM. In Tirol Milch’s advertising it used a bottle next to a full glass.

The parties agreed that there was no likelihood of confusion since the bottles were labelled ‘Pago’ and ‘La Tamiflutella’ respectively and both names were widely known in Austria.

Pago sought an injunction in Austria under Article 9(1)(c) of the Regulation (similar to Article 5(2) of the Directive). The first instance Court granted the injunction, but that decision was overturned on appeal. On a further appeal, the Oberster Gerichtshof sought guidance from the ECJ as to how to construe the phrase ‘[has] a reputation in the Community’.

By its first question, the referring Court asked whether a CTM is protected in the whole of the Community under Article 9(1)(c) if it has a reputation only in one Member State.

The AG applied General Motors (C-375/97) (which interpreted Article 5(2) of the Directive 89/04) and concluded that a CTM can be protected in the whole Community under Article 9(1)(c) if it has a reputation in a substantial part of the Community. What constitutes a substantial part was not dependent on national boundaries (this would be contrary to the premise that the CTM is unitary in character) but must be determined by an assessment of all the relevant circumstances taking into account, in particular (i) the public concerned and the proportion of that public which knows of the mark and (ii) the importance of the area in which the reputation exists, as defined by factors such as its geographical extent, population and economic significance. The AG indicated that she did not consider that a trade mark with reputation only in one member state would qualify.

By its second question, the Austrian Court asked essentially whether a CTM which has a reputation in an area that is not a substantial part of the Community is nonetheless protected in that area (which may coincide with the territory of one or more Member States), so that a prohibition against infringement limited to that area may be issued. The AG suggested that this question should be answered in the negative. Since the protection afforded to a CTM was so extensive, the conditions laid down in Article 9(1)(c) should be satisfied in full before it was triggered. Where a mark has a reputation in a substantial part of a Member State but not in a substantial part of the Community, a national registration will be necessary to protect that reputation.