In a reference from the Austrian Supreme Court, the European Court of Justice (ECJ) has ruled that for the purposes of Article 9(1)(c) of the Community Trademark Regulation (40/94/EC), reputation in a single member state of the European Community may be considered to constitute a substantial part of the territory of the Community. PAGO International GmbH v. Tirolmilch registrierte Genossenschaft mbH, Case C-301/07 (ECJ, Oct. 6, 2009).

PAGO is the proprietor of a figurative Community Trademark covering fruit juices and fruit drinks. The essential element of the mark is the representation of a green glass bottle with a distinctive label and lid. PAGO markets in Austria a fruit juice called “Pago” in such bottles. The mark is widely known in Austria. Tirolmilch markets in Austria a fruit and whey drink called “Latella” that is packaged in glass bottles similar to those depicted in PAGO’s Community Trademark. In its advertising, Tirolmilch uses a representation which, like the Community Trademark owned by PAGO, includes a bottle next to a full glass.

PAGO issued proceedings in the Vienna Commercial Court seeking an injunction to prohibit Tirolmilch from promoting, offering for sale, marketing or otherwise using its drink in the bottles at issue and from advertising by means of a representation of the bottles together with a full glass of fruit juice. The Vienna Commercial Court granted the injunction. The Higher Regional Court Vienna reversed the decision. PAGO lodged an appeal with the Austrian Supreme Court.

The Austrian Supreme Court took the view that, on an overall examination, there was no likelihood of confusion between the bottles used by Tirolmilch and PAGO’s Community Trademark, insofar as the labels affixed to the bottles bore the names “Pago” and “Tirolmilch” respectively, both of which are widely known in Austria. However, PAGO argued that Tirolmilch was taking unfair advantage of PAGO’s Community Trademark in Austria under Article 9(1)(c) of the Community Trademark Regulation. The Supreme Court expressed uncertainty as to the meaning of the words “has a reputation in the Community” used in that provision and accordingly stayed the proceedings to seek the ECJ’s guidance on the interpretation of this phrase. Following the decision in Case C-375/07 General Motors [1999] ECR I-5421, the Supreme Court presumed that it sufficed that the Community Trademark had a reputation in a “substantial part” of the Community. However, as PAGO had applied for a Community-wide injunction and its mark only had a reputation in Austria, the Supreme Court was unsure whether such an injunction could be granted.

The ECJ held that Article 9(1)(c) had to be interpreted as meaning that, in order to benefit from the protection afforded in that provision, a Community Trademark must be known by a significant part of the public concerned by the products and services covered by that trademark, in a substantial part of the territory of the European Community. On the facts of the main proceedings, the ECJ considered that Austria was capable of constituting a substantial part of the territory of the Community.

Practice Note: The case suggests that it may be sufficient for the purposes of Article 9(1)(c) to show that a Community Trademark has a reputation in one member state. However, the ECJ did not suggest that any member state, regardless of its size and of the size of the relevant market within it, would be considered “substantial.” The ECJ decision also leaves open the question of whether it would suffice to show that a Community Trademark had a reputation in part of a member state only.