Advocate General Sharpston gives her opinion on how to know.
Article 9(1)(c) of the Community Trade Mark Regulation provides: "A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade ...any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.'
This wording is almost identical to that used in Article 5(2) of the EU Trade Marks Directive, which is designed to partially harmonize the trade mark law of member states:
"Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."
In the General Motors case the European Court of Justice (ECJ) had already confirmed that under the latter provision, a trade mark had a reputation if it had acquired a reputation with the public at large or a more specialised public. Secondly it could not be inferred from the legislation that the trade mark must be known by a given percentage of the public. However the trade mark in respect of which protection is sought must be known by "a significant part of the public concerned by the product or services covered by that trade mark". Finally, the national court must consider all of the relevant facts of the case, in particular, the market share held by the trade mark, the intensity, the geographical extent and duration of its use and the size of the investment made by the proprietor in promoting it.
Accordingly the ECJ held, in the General Motors case, that it was sufficient for a Benelux trade mark to have a reputation in a substantial part of the Benelux territory, which might consist of a part of one of the Benelux countries.
PAGO International GmbH owned a Community trade mark for fruit drinks and fruit juices (and other goods). This trade mark included a representation of a green glass bottle with a distinctive label and cap next to a full glass of fruit drink along with the 'PAGO' in large letters.
Tirol Milch registrierte Genossenschaft mbH sells in Austria a fruit and whey drink called 'Lattella', packaged in glass bottles with a design which is similar in several respects to that depicted in PAGO's mark. In the advertising for its drink, Tirol Milch also uses a representation which, like PAGO's mark, shows a bottle next to a full glass.
Both parties agreed there was no likelihood of confusion, since the bottle labels used by PAGO and Tirol Milch bear the names 'PAGO' and 'Latella' respectively and both names are widely known in Austria. Accordingly only infringement under article 9(1)( c) needed to be considered.
PAGO argued that for its Community trade mark to be considered to have "a reputation in the community" it did not have to be known throughout the Community, it was sufficient for it to have a reputation throughout Austria (as had been established before the national courts)
Tirol Milch argued that it is necessary to establish whether the territory in question is substantial. It noted that member states vary enormously in size and population. If a reputation in a single member state was enough to amount to a reputation in the community, then a mark with a reputation only in Malta, representing 0.08% of the population of the EU and 0.04% of its economy, would be protected throughout the Community as a mark "with a reputation".
The Advocate General concluded that it is not possible to establish whether a Community trade mark has a reputation in the Community on the basis of whether that trade mark has a reputation in any one member state. It follows from the unitary character of the Community trade mark that one should consider the Community territory as a whole to establish what constitutes a substantial part of the Community. This must be determined in any particular case by taking account of the public concerned by the products or services covered by the trade mark (irrespective of national boundaries) and the importance of the area where the reputation exists, as defined by factors such as its geographical extent, population and economic significance in the context of the Community territory as a whole.
Furthermore, and rather unsurprisingly, the Advocate General confirmed that a Community trade mark which has a reputation in an area which is not a substantial part of the Community does not enjoy any protection at all under Article 9(1)(c) of Regulation No 40/94. Consequently, a prohibition against infringement limited to the area (or member state) where a reputation has been established may not be issued.
This guidance accords with what many trade mark advisors had always assumed to be the case in the light of the Community trade mark's unitary character. It would indeed seem disproportionate for the extra protection granted to marks with a reputation to apply where that reputation could be among only a tiny proportion of the community as a whole simply because of territorial boundaries.
However it would, in the Advocate Generals' words, be politically "invidious", to have to determine whether one member state should be considered substantial and another insubstantial. The Advocate General's middle way would therefore appear to be the only sensible solution.
However what this opinion does highlight is that a community trade mark is not in many cases a substitute for appropriate national registrations but is rather only complimentary to them.