This article was originally published in the schoenherr roadmap`10 - if you would like to receive a complimentary copy of this publication, please visit: http://www.schoenherr.eu/roadmap.

The proof of reputation of a Community Trademark (CTM) in one single EU member state can suffice to grant it the specific protection of trademarks with a reputation in the European Community.

The Dispute In The Main Proceedings

Pago International GmbH (Pago), one of Austria's largest fruit juice producers, has owned a CTM since 2001 showing the characteristic PAGO fruit juice bottle (green glass, red marking on yellow/white label, yellow screw top) next to a glass filled with fruit juice. Tirol Milch registrierte Genossenschaft mbH (Tirol Milch) sold wheybased beverages in Austria under the designation LATTELLA, initially in cartons, then also in glass bottles. Those bottles were similar to the bottle appearing in Pago's CTM. In advertising, Tirol Milch pictured the bottle also next to a glass.

Pago initiated interlocutory proceedings before the Commercial Court Vienna (Handelsgericht Wien), which issued an interlocutory injunction. Tirol Milch appealed. The High Court Vienna (Oberlandesgericht Wien) dismissed the request for the injunction. Pago then took the case to the Austrian Supreme Court (Oberster Gerichtshof; OGH). The OGH did not find for a likelihood of confusion as the labels of the bottles in question bore the designations PAGO and LATTELLA, both of which are highly reputed in Austria.

Hence, the question arose whether Pago could rely on the specific protection against taking unfair advantage of the CTM's reputation. The OGH took the reputation of the CTM in Austria for granted, but questioned whether such a region-specific reputation would suffice to qualify the mark according to Article 9(1)(c) of the CTM Regulation as "having a reputation in the Community". The OGH interrupted the proceedings and brought the matter to the European Court of Justice (ECJ). Christian Hauer, a Schoenherr partner who has helped shape trademark law over the past decades, acted for Pago.

The ECJ Ruling

The ECJ1 agreed with the position of Pago. In this landmark decision, the ECJ ruled that a trademark infringement action could be based on the specific protection of a CTM with a reputation, even if such CTM is proven to have a reputation in only one EU member state.

Outlook

This decision brings important and welcome consequences for brand owners. If the court had ruled otherwise (as Advocate General Sharpston proposed in her opinion of 30 April 2009), brand owners whose trademarks have a reputation in only one EU member state would have been forced to register national trademarks in parallel to their CTM registrations to benefit from such reputation. The decision clearly strengthens the CTM system.

Community Trademarks that have a reputation in only one EU member state can be protected as trademarks having a reputation in the entire European Community.

This article was originally published in the schoenherr roadmap`10 - if you would like to receive a complimentary copy of this publication, please visit: http://www.schoenherr.eu/roadmap.

Footnote

1. ECJ 6 October 2009 case C-301/07 - PAGO

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