Claim No: IP-2022-000086 - [2024] EWHC 1430 (IPEC)

The relevant factors for assessing whether a mark possesses a reputation include: (i) market share (ii) intensity, geographical extent, and duration of use of the mark; and (iii) size of investment in the mark. Reputation is a question of fact to be determined in each case, see for e.g. T-47/06 Nasdaq EU:T:2007:131.

I accept the Defendants’ submission that although distinctiveness and reputation are, strictly speaking, separate concepts, it is hard to conceive of circumstances in which a party that failed to show any distinctiveness can nevertheless ‘get home’ on reputation. This is because reputation requires a certain degree of knowledge of the earlier mark among the public, see C- 375/97 Chevy EU:C:1999:408, at [23].