The relevant date
54.In Levi Strauss & Co v Casucci SpA Case (C-145/05) [2006] ETMR 71, the CJEU discussed the relevant date for assessing likelihood of confusion in the context of art.5(1) of Directive 89/104, equivalent to art.9(2)(b) of the Regulation:“[15] The Court has thus pointed out that, in order to ensure the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish that product or service from others which have another origin, the proprietor must be protected against competitors wishing to take unfair advantage of the status and reputation of the trade mark by selling products illegally bearing that mark (see Case C-349/95 Loendersloot [1997] E.C.R. I-6227, at [22], and Case C-206/01 Arsenal Football Club [2002] E.C.R. I-10273, at [50]). That must also be the case where, on the basis of a similarity between the signs and the mark in question, there is a likelihood of confusion between them. [16] Member States must take measures which are sufficiently effective to achieve the aim of the directive and they must ensure that the rights conferred by it can be effectively relied upon before the national courts by the persons concerned (see Case 14/83
Von Colson and Kamann
[1984] E.C.R. 1891 at [18], and Case 222/84
Johnston [1986] E.C.R. 1651 at [17]).[17] The proprietor's right to protection of his mark from infringement is neither genuine nor effective if account may not be taken of the perception of the public concerned at the time when the sign, the use of which infringes the mark in question, began to be used. [18] If the likelihood of confusion were assessed at a time after the sign in question began to be used, the user of that sign might take undue advantage of his own unlawful behaviour by alleging that the product had become less renowned, a matter for which he himself was responsible or to which he himself contributed.[19] Article 12(2)(a) of Directive 89/104 provides that a trade mark is liable to revocation if, after the date on which it was registered, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service in respect of which it is registered. Thus, by balancing the interests of the proprietor against those of his competitors in the availability of signs, the legislator considered, in adopting this provision, that the loss of that mark's distinctive character can be relied on against the proprietor thereof only where that loss is due to his action or inaction. Therefore, as long as this is not the case, and particularly when the loss of the distinctive character is linked to the activity of a third party using a sign which infringes the mark, the proprietor must continue to enjoy protection. [20] In the light of all the foregoing, the answer to the first and second questions must be that Art.5(1) of Directive 89/104 must be interpreted as meaning that, in order to determine the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, the national court must take into account the perception of the public concerned at the time when the sign, the use of which infringes that trade mark, began to be used.”55.Mr Jones argued that each act of infringement must be separately assessed. So where, as here, a defendant is alleged to infringe over a period of time, the reputation of the trade mark in question may vary over that period, with the consequence that he may infringe for only part of that period (if at all). Mr Jones referred to Stichting BDO v BDO Unibank Inc [2013] EWHC 418 (Ch); [2013] ETMR 31, at [94].56.Ms Chantrielle argued that Levi Strauss should be applied by analogy; the only relevant date is the date on which UPL first used the BURGISTA sign.57.I think Ms Chantrielle is right. In Stichting BDO Arnold J referred to the necessity of a new assessment of infringement where the defendant has embarked on a use of its sign in a materially different manner. Use of the same sign in relation to a new restaurant where it has already been used in relation to an existing restaurant is not use in a materially different manner.58.It is clear from the passage of the judgment in Levi Strauss which I have quoted above that although the CJEU was considering only the equivalent to art.9(2)(b), it reached its conclusion on the relevant date by reference to the equivalent of art.9(2)(c). The Court was especially concerned that once a trade mark proprietor has proved all the elements for establishing infringement, including reputation for the equivalent of art.9(2)(c), the proprietor should only lose the right to protect his mark in consequence of his own acts or inactivity, pursuant to art.12(2)(a) of the Directive (equivalent to art.51(1)(b) of the Regulation). His right should not be affected by the acts of a defendant which might deprive the trade mark of its reputation.59.The reputation of the Trade Mark in this case must be assessed as of the date on which UPL first started to trade under the Burgista sign.