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CTM Infringement - Reputation
A recent decision by the ECJ may have important consequences for owners of CTMs
In PAGO International GmbH v Tirolmilch registrierte Genossenschaft mbH (C-301/07) the ECJ ruled that a Community Trade Mark (CTM) having a reputation in only one Member State can be sufficient to constitute "reputation in the Community" under Article 9(1)(c) CTMR.
PAGO, was the proprietor of a figurative mark, consisting of a green glass bottle with a distinctive label and lid, next to a glass of fruit drink for, amongst other things, fruit juices. PAGO appeared on the label and the glass. The CTM was well known throughout Austria but nowhere else in the EU.
Tirolmilch marketed, also in Austria, a fruit-and-whey drink called Latella. It was packaged in similar glass bottles to PAGO's and its advertising resembled PAGO's CTM in several aspects.
PAGO brought infringement proceedings against Tirolmilch, claiming that they were taking unfair advantage of the reputation of PAGO's CTM in Austria and sought an injunction to prohibit its use throughout the Community.
The Austrian court made a reference to the ECJ asking whether a CTM is protected as a "trade mark with a reputation" for the purposes of Article 9(1)(c) CTMR if it has reputation in only one Member State.
The ECJ ruled that a CTM must be known by a significant part of the public concerned by the goods or services in question and in a substantial part of the Community. The Court held that one Member State could constitute a substantial part of the Community.