Do Community Trade Mark registrations properly protect marks with a reputation in the UK?

Registered Community Trade Marks with a reputation in the Community potentially enjoy protection against infringement that takes unfair advantage of or causes detriment to that reputation.  Similarly, national trade mark registrations in member states of the European Community (e.g. the UK) that have a reputation in the relevant European Community member state potentially enjoy equivalent protection in that state.

However, this could suggest that a registered Community Trade Mark requires a reputation which is geographically more widespread (i.e. across the whole Community, perhaps) to enjoy such protection than is required by a nationally registered mark.  In principle, therefore, a UK registration could provide stronger protection in the UK than a Community Trade Mark registration for a mark whose reputation is in the UK only.

This apparent discrepancy has been considered by the European Court of Justice in the case of  PAGO vs Tirolmilch (Case C-301/07).  Initially, the opinion of Advocate General Sharpston reinforced the differences set out above.  However, the European Court of Justice's final ruling does not follow the Advocate General's opinion, and will help settle the nerves of those relying solely on Community Trade Mark protection.  The case concerned a mark having a strong reputation in Austria, but nowhere else in the European Community.  In answer to the referred question:

“Is a Community trade mark protected in the whole Community as a “trade mark with a reputation”… if it has a “reputation” only in one Member State?”

the European Court of Justice ruled that to benefit from such protection:

“a Community trade mark 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…the territory of the Member State in question [i.e. Austria] may be considered to constitute a substantial part of the territory of the Community”.

In other words, albeit a relatively small state, Austria is large enough to be a “substantial part” of the European Community and therefore a reputation in Austria alone is considered sufficient for a registered Community Trade Mark to be protected as a “trade mark with a reputation”.

We believe this is good news for owners of registered Community Trade Marks!