Infringement – art.9(2)(c)
44.There are four express requirements for infringement by the use of an accused sign within the terms of art.9(2)(c);(1)the trade mark is identical or similar to the sign;(2)the trade mark enjoys a reputation in a substantial part of the EU;(3)the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark;(4)such use is without due cause.45.For the third requirement to be satisfied, there must be a link between the trade mark and the sign in the mind of the average consumer; the existence of the link is to be assessed globally, taking into account all factors relevant to the circumstances of the case, see Intel Corp Inc v CPM United Kingdom Ltd (C-252/07) EU:C:2008:655; [2009] RPC 15, at [30]-[31] and [41]. The necessity of a link was more firmly stated in Iron & Smith kft v Unilever NV (C-125/14) EU:C:2015:539; [2015] ETMR 45, at [28].46.There is bound to be a link if a likelihood of confusion within the meaning of art.9(2)(b) has been proved, see Intel at [57], though a link may exist without the likelihood of confusion (Intel at [58]). A link will be established if the sign would call the trade mark to mind (Intel at [60]). The existence of a link, though necessary, is not sufficient to establish that the sign takes unfair advantage of or is detrimental to the distinctive character or repute of the trade mark (Intel at [32]).47.To satisfy the third requirement it is not necessary for the trade mark proprietor to demonstrate actual and present injury. Proof that there is a serious risk that such injury will occur in the future is enough, see Intel at [38].48.Proof of dilution requires evidence of a change in economic behaviour of the relevant average consumer consequent on the use of the sign, or a serious likelihood that such a change will occur in the future (Intel at [77]).49.The law with regard to art.5(2) of Directive 2008/95/EC, the equivalent to art.9(2)(c) of the Regulation, was more fully set out by the Court of Appeal in Comic Enterprises at [107]-[123].
The matters left in issue
50.Of the four express elements of art.9(2)(c), two remain in issue. No argument of due cause was advanced by the Defendants. I have found that the trade mark and sign are similar. That leaves reputation and injury.51.With regard to injury, in his skeleton argument and orally Mr Jones only pressed BG’s case that it would suffer because of dilution of its trade mark.
Reputation
52.The Defendants’ main argument in relation to art.9(2)(c) concerned reputation. Three points arose, two of law and one of fact. First, the time at which reputation is to be assessed; secondly, the extent of the reputation required for art.9(2)(c) to be engaged and thirdly, with those two points in mind, whether on the facts BG had sufficient reputation by the relevant date.53.Lest there be any doubt, the meaning of ‘reputation’ in art.9(2)(c) and its equivalent in Directive 2008/95 (formerly Directive 89/104), art.5(2), is the same as that in in art.8(5) of the Regulation and art.4(3) of the Directive (see Iron & Smith at [16]).