Case No. IP-2015-000175

60.Mr Jones pointed out that Arnold J has more than once said that establishing reputation for the purpose of art.9(2)(c) (and its equivalents) is not a particularly onerous requirement, most recently in those terms in Enterprise Holdings, Inc v Europcar Group UK Ltd [2015] EWHC 17 (Ch); [2015] FSR 22, referring to General Motors Corp v Yplon SA (C-375/97) EU:C:1998:575; [1999] E.T.M.R. 950 and PAGO International GmbH (C-301/07) EU:C:2009:611; [2010] E.T.M.R. 5 . Given the arguments in the present case, I must discuss this further.61.At one end of the scale it could be said that once a trade mark proprietor starts to trade under his mark, the mark is bound to acquire a reputation within the Union, if only in the local street.62.By way of an alternative view, it has been held that the reputation which art.9(2)(c) (and its equivalents) seeks to protect is the same as that of a well-known mark within the meaning of art.6bis of the Paris Convention for the Protection of Industrial Property, see Nigel Kelly v NGRID Intellectual Property Ltd [2014] ETMR 21, at [41].63.It is true that in Alfredo Nieto Nunõ v Leonci Monilleó Franquet (Case C-328/06) EU:C:2007:704 the CJEU held (at [17]) that a trade mark being well-known within the meaning of art.6bis of Paris is a “kindred concept”’ to reputation under art.5(2) of Directive 89/104 (equivalent to art.9(2)(c) of the Regulation). But it does not follow that that they are the same thing. The two were compared by Advocate General Jacobs in General Motors (EU:C:1998:408, at [30]-[37]). He said (at [37])“… it is possible to conclude in my view that, although the concept of a well-known mark is itself not clearly defined, a mark with a ‘reputation’ need not be as well known as a well-known mark.”64.Thus, when the CJEU in Nuño spoke of reputation in art.9(2)(c) being a kindred concept to a mark being well-known under art.6bis of Paris (la notion voisine in French), I interpret the Court to have meant that the factors which are relevant to the assessment of each are the same or very similar, but the threshold is different. It is lower in the context of a reputation under art.9(2)(c).65.It is not so low that a reputation going no further than the local street will be enough. The CJEU has most recently considered what ‘reputation’ means in Iron & Smith and Ornua Co-operative Ltd v Tindale & Stanton Ltd España SL(C-93/16) EU:C:2017:571; [2017] ETMR 37. In Iron & Smith that company applied to register a national trade mark in Hungary. Registration was opposed by Unilever NV pursuant to art.4(3) of Directive 2008/95. Unilever relied on its similar EU trade mark, claiming that its mark had a reputation in the Union. There was evidence that Unilever’s sales of products under its trade mark had 5% of the market in the UK and 0.2% in Italy. There was no evidence of any market share in Hungary. Having stated that ‘reputation’ in art.4(3) of the Directive means that same thing as in art.9(1)(c) of the Regulation (now art.9(2)(c)), the CJEU said:“[17] In that connection, as regards art.9(1)(c) of Regulation 40/94, the Court held that the concept of ‘reputation’ assumes a certain degree of knowledge amongst the relevant public, which must be considered to be reached when the Community trade mark is known by a significant part of the public concerned by the products or services covered by that trade mark (see judgment in PAGO International (C-301/07) EU:C:2009:611 at [21] and [24]).[18] In examining this condition, 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 (judgment in PAGO International (C-301/07) EU:C:2009:611 at [25]).[19] Territorially, the condition as to reputation must be considered to be fulfilled when the Community trade mark has a reputation in a substantial part of the territory of the Community and such a part may, in some circumstances, correspond to the territory of a single Member State (see, to that effect, PAGO International (C-301/07) EU:C:2009:611 at [27] and [29]).[20] Thus, if the reputation of an earlier Community trade mark is established in a substantial part of the territory of the EU which may, in some circumstances, coincide with the territory of a single Member State, it must be held that that mark has a ‘reputation in the [EU]’, within the meaning of art.4(3) of Directive 2008/95 , and the proprietor of that mark is not required to produce evidence of that reputation in the Member State in which the application for registration of the later national mark, which is the subject of an opposition, has been filed.…[25] Having regard to all the foregoing considerations, the answer to the first three questions is that art.4(3) of Directive 2008/95 must be interpreted as meaning that, if the reputation of an earlier Community mark is established in a substantial part of the territory of the EU, which may, in some circumstances, coincide with the territory of a single Member State, … it must be held that that mark has a reputation in the EU.”66.The Court also ruled that the case law regarding ‘genuine use’ provided no guide to what is meant by ‘reputation’ (at [21]-[24] and the last sentence of [25], omitted above). I would add that I am not aware of any court having suggested that assessments in relation to infringement, the distinctiveness of a trade mark, or anything else, provide any guide either.67.Advocate General Wahl said:“[17] Indeed, in the final analysis, the question of reputation depends on the relevant market for the goods and services under consideration. The answer to the question of what constitutes a substantial part of the EU requires, therefore, a circumstantial analysis that only the national court dealing with the case can undertake. As the Court has noted, the market share held by the earlier trade mark, the intensity, geographical extent and duration of its use as well as the size of the investment made by the undertaking in promoting the mark are all factors to be taken into account in that analysis. In other words, reputation constitutes a knowledge threshold requirement, which must be assessed on the basis of quantitative criteria. To determine whether a specific trade mark has a reputation in a substantial part of the EU thus requires a combination of geographical and economic criteria. The significance of the relevant market for given goods or services therefore ought to assume a paramount role in the analysis. [18] More specifically, as can be inferred from Pago International, the question of what constitutes a substantial part of the EU is necessarily – and this is a point that cannot be over-emphasised – dependent on the specific mark which is described as enjoying a reputation and accordingly, the public concerned. Given that it is proportion rather than absolute numbers that matters in this context, the fact that the relevant market may be of a limited overall size does not, as such, prevent a mark from acquiring reputation. While in my view the territory of a Member State (large or small alike) may indeed, as the case may be, constitute a substantial part of the EU, the analysis leading to that conclusion must nevertheless be conducted without consideration of geographical borders.”68.Ornua concerned an EU trade mark and a sign which peacefully co-existed in one part of the EU and the consequences of that on the right to use the sign in another part of the Union. With regard to the meaning of ‘reputation’, the Court reiterated what it had said in PAGO and Iron & Smith.69.I draw the following from the judgments of the Court in PAGO and Iron & Smith and from the opinion of Advocate General Wahl in Iron & Smith:(1)An EU trade mark has a reputation within the meaning of art.9(2)(c) if it was known to a significant part of the relevant public at the relevant date.(2)The relevant public are those concerned by the products or services covered by the trade mark.(3)The relevant date is the date on which the defendant first started to use the accused sign.(4)From a geographical perspective, the trade mark must have been known in a substantial part of the EU at the relevant date. (5)There is no fixed percentage threshold which can be used to assess what constitutes a significant part of the public; it is proportion rather than absolute numbers that matters.(6)Reputation constitutes a knowledge threshold, to be assessed according to a combination of geographical and economic criteria.(7)All relevant facts are to be taken into consideration when making the assessment, 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 undertaking in promoting it.(8)The market for the goods or services in question, and from this the identity of the relevant public, ought to assume a paramount role in the assessment.(9)The territory of a single Member State (large or small) may constitute a substantial part of the EU, but the assessment must be conducted without consideration of geographical borders.70.In PAGO the market was for fruit drinks. The trade marks were known throughout Austria and this was sufficient for the mark to have a reputation. The Court said:“[29] As the present case concerns a Community trade mark with a reputation throughout the territory of a Member State, namely Austria, the view may be taken, regard being had to the circumstances of the main proceedings, that the territorial requirement imposed by Article 9(1)(c) of the regulation is satisfied.”71.Though the CJEU is understandably wary of numbers, I will note in passing that the population of Austria is about 8.7 million, out of a total EU population of about 512 million.72.It was important that the relevant market in PAGO, fruit drinks, was a market which extended across the entire public, or as near as made no difference. (Economic criteria were not stated in the judgment.)73.It can be concluded that if the market for the goods or services for which a trade mark is registered is similarly broad and the mark is known throughout a Member State the size of Austria, this will constitute knowledge of the mark among a significant part of the public of the EU. The mark will qualify for the status of having a reputation in the Union.74.That said, it is very hard to be sure about where the knowledge threshold lies in such a case (or any case). One clue is that the Court and the Advocate General did not imply that knowledge throughout Austria was so self-evidently sufficient that the adequacy of the mark’s reputation barely merited discussion. My impression is that if knowledge had been confined to limited parts of Austria, that might not have been enough.