Case No. EWHC-3296-(IPEC)

70. In Sky plc v Skykick UK Ltd [2018] EWHC 155 at [307], Arnold J. provided the following guidance as regards the test for establishing whether a trademark has a reputation: “Reputation of the trade mark. This is not a particularly onerous requirement. As the Court of Justice explained in Case C-375/97 General Motors Corp v Yplon SA [1999] ECR I-5421: ‘24. The public amongst which the earlier trade mark must have acquired a reputation is that concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector. 25. It cannot be inferred from either the letter or the spirit of Article 5(2) of the Directive that the trade mark must be known by a given percentage of the public so defined. 26. 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. 27. 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.’” 71. As Mr. Carter submitted, the factors relevant in determining whether a mark has a reputation are effectively the same as those for assessing whether it has acquired a distinctive character. Given my findings above regarding the distinctive character of the Mercury mark, I find that condition (i) is satisfied and that the mark had acquired a reputation for the purposes of s.10(3).