IP-2022-000036 - [2023] EWHC 2005 (IPEC)

The issue argued by the parties in relation to s.5(3) was the requirement that the Ford Cobra Marks had established a reputation by the relevant date. In Burgerista Operations GmbH v Burgista Bros Ltd [2018] EWHC 35 (IPEC) I considered the requirements of establishing a reputation under art.9(2)(c) of Council Regulation (EC) 2007/2009, the Regulation governing EU trade marks that was relevant to that case. Art.9(2)(c) is equivalent to s.5(3) of the 1994 Act. I discussed the judgments of the CJEU in PAGO International GmbH v Tirolmilch Registrierte Genossenschaft mbH (C-301/07) EU:C:2009:611, Iron & Smith kft v Unilever NV (C-125/14) EU:C:2015:539 and Iron & Smith and Ornua Co-operative Ltd v Tindale & Stanton Ltd Espana SL (C-93/16) EU:C:2017:57:

“[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; [see the discussion in Burgerista at [54]-[59]]

(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; and

(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.”

An oddity of the present case is that at the date of filing and registration of the first Ford Cobra Mark, 14 April 1966, there had already been use of the AC Cobra Mark in the UK. Chris Theodore said that AC Cars sold an AC Cobra car in the UK in 1963. The first Ford Cobra Mark never acquired a reputation qua trade mark on the evidence presented and cannot have had a reputation of any sort at that date because it was not registered.

As I have said, counsel agreed that the relevant date for assessing the reputation of the AC Cobra Mark was its the priority date of 31 October 2006. The defendants relied solely on use of Cobra by AC Cars, licensed by Ford – use as “AC Cobra”. This highlights the curiosity of the argument, namely that the later mark before it was registered did the work of establishing a reputation for the earlier mark, yet the use of the later mark after it was registered took unfair advantage of, or was detrimental to, the distinctive character or repute of the earlier mark. I do not accept the argument. The case in relation to s.5(3) does not succeed.