Europa Article 5(2) of First Council Directive 89/104 concerning trade marks – which extends the protection of a registered trade mark to products or services which are neither identical nor similar to those for which the mark is registered, where the latter has a reputation in the Member State and there is clear evidence that the mark is being unfairly harmed – is to be interpreted as meaning that, in order to satisfy the requirement relating to reputation, a registered trade mark must be known by a significant part of the public concerned by the products or services which it covers. In examining whether this condition is fulfilled, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it. Territorially, the condition is fulfilled when the trade mark has a reputation in a substantial part of the territory of a Member State since, failing closer definition of requirements under Community law on this point, a trade mark cannot be required to have a reputation `throughout’ the territory of the Member State. Accordingly, in the Benelux territory, it is sufficient for the mark to be known by a significant part of the public concerned in a substantial part of that territory, which may consist of a part of one of the Benelux countries.
To have a reputation a trade mark must satisfy a ‘knowledge threshold’: ‘The degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark.
In examining whether this condition is fulfilled, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.’
C-375/97, [1999] EUECJ C-375/97, [1999] ECR I-5421
Bailii
European
Cited by:
Considered – Daimler Chysler AG v Javid Alavi (t/a Merc) ChD 18-Dec-2000
Where a trader was involved in an activity quite outside any activity which might be undertaken by the holder of the registered trade mark, and there was no real likelihood of confusion, the owner of the mark could not claim that the value of his . .
Cited – Mastercard International Incorporated v Hitachi Credit (Uk) Plc ChD 8-Jul-2004
The claimants challenged award of a trade mark saying they were owners of many marks incorporating the word ‘Master’ associated with credit, and the applicants mark was too similar to its own.
Held: Applying Davidoff, the words can also be . .
Cited – Intel Corporation v Sihra ChD 2003
The court considered the observations of Pumfrey J in the Chrysler case as requiring proof of real future unfair advantage or detriment and not merely risk, and emphasised both the need for a causal connection between similarity on the one hand and . .
Cited – L’Oreal Sa and others v Bellure NV and others ChD 4-Oct-2006
The claimant alleged that the defendants had been importing copies of their perfumes. The products were not counterfeits, but ‘smell-alikes’. The defendants’ packaging and naming was used to suggest which perfume it resembled.
Held: The . .
Lists of cited by and citing cases may be incomplete.
Updated: 21 August 2021; Ref: scu.162261