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On 6 October 2009, the European Court of Justice ("ECJ") delivered its judgment in Case C-301/07 Pago International GmbH v Tirol Milch reg Gen mbH.  This was a reference from the Austrian Supreme Court for clarification on the question of when a CTM can be said to claim a reputation in the Community for the purposes of Article 9(1)(c) of the CTM Regulation.

CTMs with a reputation enjoy wider protection in that they can be used to prevent unauthorised third parties from using similar marks in relation to different goods/services if without due cause they take unfair advantage of (or are detrimental to) the distinctive character or repute of the CTM.

Pago's CTM featured a green glass bottle with a distinctive label and cap standing next to a glass of its fruit juice drink.  The word PAGO appears on both bottle and glass.  Tirol Milch had sold a fruit and whey drink in Austria in similar glass bottles, and had advertised its product in a manner similar to the CTM (i.e. a bottle next to a full glass).  Pago commenced infringement proceedings in Austria and obtained an injunction against Tirol Milch's use of its own bottle design, and also against advertising of its wares in the manner described.  The decision was reversed on appeal, and Pago appealed further to the Austrian Supreme Court.

Pago's CTM was well known in Austria, but not necessarily in other Member States of the EC.  The Supreme Court asked the ECJ whether a CTM could be considered to have a reputation throughout the Community if it had a reputation only in one Member State.  If the answer to that question was 'no', the Court asked whether an injunction against use of an infringing mark was permissible under the Regulation limited to the Member State where the CTM did enjoy a reputation.

Previous guidance on the subject of 'reputation' for the purposes of trade mark law had been given by the ECJ in the General Motors case (Case C-375/97), although this had been in relation to reputation within the Benelux countries (i.e. Belgium, the Netherlands and Luxembourg), and not throughout the Community.  It was held in that case that a mark has a sufficient reputation if it can claim it in a 'substantial part' of the Benelux territories, which might consist of a part of merely one of those countries.

The Advocate General ("AG") in the Pago case had advised that whilst the General Motors decision should apply by analogy, the position in relation to Community-wide reputation should not be analysed on the basis of looking at individual Member States.  Although the Commission had filed observations submitting that in certain exceptional cases, reputation in a single Member State would suffice where the relevant public is exclusively to be found in that State, the AG held that "an approach which focuses on Member State boundaries... is fundamentally misconceived".  In her opinion, one must consider the territory of the Community "regardless of frontiers, as a single and indivisible whole".

The ECJ appears to have disagreed with this analysis.  It held that 'reputation' assumes a certain degree of knowledge amongst the relevant public, being that public concerned by the CTM (i.e. depending on the goods/services marketed, either the public at large or a more specialised public).  The degree of knowledge required is satisfied when the CTM is known by a 'significant part' of that public.

To establish this, it is for the national Court to consider all the relevant facts of the case (in particular the market share held by the CTM, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it), and then to determine whether as a result the CTM could be deemed to be known by a significant part of the public concerned by the goods covered by the mark.

The ECJ agreed that from a territorial point of view, the requirement for 'reputation' within the Community must be considered to be fulfilled when the CTM has a reputation in a substantial part of the territory of the Community.  Citing its previous finding in relation to the Benelux group of countries in the General Motors case (as noted above), the Court held that since the present case concerned a CTM with a reputation "throughout the territory of a Member State, namely Austria, the view may be taken... that the territorial requirement imposed by Article 9(1)(c) is satisfied".

The official response to the first question states that for the purposes of proving a reputation in the Community, a CTM "must be known by a significant part of the public concerned by the products or services covered by that trade mark, in a substantial part of the territory of the European Community, and that, in view of the facts of the main proceedings, the territory of the Member State in question may be considered a substantial part of the territory of the Community" [emphasis added].  (Given the affirmative response to the first question, the Court declined to answer the second.)

It is unclear from this whether the ECJ is basing its answer on the fact that the Member State in question here was Austria (i.e. a fairly sizeable Member State in comparison to others), and whether if the Member State in question had been, say, Malta (an example cited by Tirol Milch in its submissions) its answer would have been the same.  It is notable that the official response did not say 'a single Member State' rather than 'the Member State in question'.

Whatever the ECJ's intentions, it seems that for the purposes of claiming a reputation in the Community, a reputation within a single Member State may in theory suffice, despite the AG's reservations about partitioning the Community in this way.  It is for national Courts to assess factors such as market share held by the CTM, intensity, geographical extent and duration of its use, and the investment in promoting it, in coming to this conclusion - although whether this is possible without at least some reference to Member State partitions, given that most CTM owners are likely to retain records on brand sales etc. on a country by country basis, remains to be seen.