Marks with a reputation on the up again

A trademark which is known in a substantial part of the EU by a significant part of the public has the status of a trademark having a reputation in the European Union. We know so since the Pago case of 2009. Take for instance our national pride Mora – an iconic mark in the finger food category.
A wide reputation in the Netherlands and as a result (therefore) a EU mark with a reputation, if we assume that the Netherlands characterizes as ‘substantial part of the EU’. Thus Mora has the additional broad protection from dilution, reputation harm and ‘riding on the coat-tails’. However, can such broad protection also be enforced in territories where the reputation threshold is not reached, but where Mora does have some exposure – say for instance France? And how do things
stand in Rumania, where most likely nobody ever heard of Mora?

In Iron & Smith / Unilever the EU Court of Justice gave clarity. Strictly speaking this case concerned an opposition, but I do read a much broader purport in the decision. The action based on a EU mark with a reputation is possible, in the first place, where the mark actually crosses the reputation threshold. And also where a commercially significant part of the public knows the mark – the latter criterion is new (in the French and Dutch language versions it even says commercially not negligable). Then the trademark owner still has to demonstrate dilution, reputation harm or ‘riding on the coat-tails’ in said territory, or that there is a serious risk that one of said situations will occur in the future. In territories where (almost) nobody knows the mark, the broader protection for the mark with a reputation therefore cannot be claimed. And so this very broad interpretation of Pago has now been abandoned.

This is good news for marks with a reputation: from now on the ‘grey area’ can also fall within the scope of an injunction action. Will Mora conquer Europe as yet?

Maarten Haak, trademark lawyer

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