By an application filed on 13 April 2012, Iron & Smith requested OHIM to register as a national trade mark the colour figurative sign ‘be impulsive’.
Unilever opposed that application on the grounds of paragraph 4(1)(c) of the Law on trade marks ( see below) based on its earlier Community and international word marks, ‘Impulse’.
Unilever opposed the mark but this was rejected having failed to prove that its trade marks were widely known in Hungary, and that their reputation could not be established.
However, the ECJ found that given that Unilever had advertised and sold large quantities of the goods in the United Kingdom and Italy, the reputation of the Community trade mark had been proved with respect to a substantial part of the European Union.
The most important requirement to establish a reputation in one member state is what constitutes a commercially significant number. Although there was no definition of what constitutes commercially significant.
Article 1 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), provides:
‘1. A trade mark for goods or services which is registered in accordance with the conditions contained in this Regulation and in the manner herein provided is hereinafter referred to as a “Community trade mark”.
2. A Community trade mark shall have a unitary character. It shall have equal effect throughout the Community: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its use be prohibited, save in respect of the whole Community. This principle shall apply unless otherwise provided in this Regulation.’
4 Under Article 9(1)(c) of that regulation:
‘1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.’
5 According to Article 15(1) of that regulation:
‘If, within a period of five years following registration, the proprietor has not put the Community trade mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the Community trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.’
6 Article 51(1)(a) of Regulation No 207/2009 provides:
‘The rights of the proprietor of the Community trade mark shall be declared to be revoked on application to the Office [for Harmonisation in the Internal Market (Trade Marks & Designs) (OHIM)] or on the basis of a counterclaim in infringement proceedings:
(a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; …’
7 Article 4 of Directive 2008/95 is worded as follows:
‘1. A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:
(b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier trade mark.
2. “Earlier trade marks” within the meaning of paragraph 1 means:
(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks;
(i) Community trade marks;
3. A trade mark shall furthermore not be registered or, if registered, shall be liable to be declared invalid if it is identical with, or similar to, an earlier Community trade mark within the meaning of paragraph 2 and is to be, or has been, registered for goods or services which are not similar to those for which the earlier Community trade mark is registered, where the earlier Community trade mark has a reputation in the Community and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier Community trade mark.