On 24 March 2015, Advocate General Wahl (the "Advocate General") delivered his opinion in a case pitting Iron & Smith Kft against Unilever NV (Case C‑125/14).
On the basis of its earlier Community trade mark 'impulse', Unilever had objected to Iron & Smith's application to register the colour figurative sign 'be impulsive' as a Hungarian trade mark. The Hungarian Intellectual Property Office sided with Unilever as it found that the reputation of Unilever's Community trade mark in the United Kingdom was sufficient to prove that the trade mark had a reputation in a substantial part of the European Union. As a consequence, it refused Iron & Smith's application. Indeed, Article 4(3) of Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (the "Trade Mark Directive") states that a "trade mark shall furthermore not be registered [...] if it is identical with, or similar to, an earlier Community trade mark [...] 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".
Iron & Smith applied for annulment of the decision before the Budapest Municipal Court. Having doubts as to the correct interpretation of Article 4(3) of the Trade Mark Directive, the Budapest Municipal Court stayed the proceedings pending a preliminary ruling by the Court of justice of the European Union (the "ECJ") on the extent to which a trade mark's reputation must be widespread in order to benefit from Article 4(3) of the Trade Mark Directive.
In his opinion, the Advocate General suggested that, for purposes of Article 4(3) of the Trade Mark Directive, it may be sufficient for a Community trade mark to enjoy a reputation in only one Member State, which does not necessarily have to be the same as that in which opposition has been filed, as long as it can be shown that a commercially pertinent proportion of the relevant public in the Member State where the opposition is filed will make a link with the earlier trade mark.
It remains to be seen whether the ECJ will agree with the AG's opinion.
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