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Some Reflections on the Concept of “Renowned Trade Mark”

27 November 2018

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Lately, there has been a stronger commitment at a European Community level to reach recognition of a well-known prestigious trade mark in the context of a widespread sporting activity. The issue recently reached the Court of Justice of the European Union before which, last January, an interesting debate took place on a new proposed burden of proof in contrast to the previous pronouncement by the First Board of Appeal.

At the hearing, some interesting points emerged on the concept of well-known “renowned” trade mark that are worthy of special consideration.

The concept of a trade mark enjoying "renown" and notoriety was first introduced in the Paris Convention and later adopted by the various national laws and the European legislation. The enjoyment of notoriety or "renown" is the indicator that prevents the valid registration and use of other subsequent identical or similar trade marks with the intent to identify dissimilar products to those for which the well-known trade mark has been registered. The extension of the protection of a registered trade mark to products not similar to those related to registration is, therefore, of particular importance, as it allows the protection to also be extended to goods that are presumably outside the sphere of immediate interest of the owner of the registration.

The criteria for determining whether a trade mark enjoys "renown" and is therefore worthy of the ultra-merchandise protection is defined by case law. Both the national judges and the European Community judges have tried to identify in the most objective way possible, the parameters pursuant to which it can be considered that the “renown” characteristics are present - i.e. the extent of the product market share, the actual awareness by the consumer, the quantitative and qualitative nature of advertising investments, the time of presence in the market and the territorial scope of the pre-use. The list, however, is not exhaustive, nor does the presence of all or only some of the identified elements automatically imply the notoriety of the trade mark. It will, in fact, always be necessary to carry out a specific evaluation of the use of the trade mark.

With the contested decision, the First Board of Appeal in deciding whether or not the renowned nature of the trade mark in dispute is established, has confirmed some jurisprudential principles with reference in particular to:

  1. The specific point in time in which the "renowned" concept or the persistent notoriety of the earlier mark must be evaluated, in the annulment judgments;
  2. The qualification of the concept of "relevant public" that must be considered in order to establish the concept of "well known" trade marks;
  3. The elements that contribute to give the conflicting trade mark the character of renowned.

As for point 1), the First Board of Appeal confirmed that the notoriety of the earlier mark must be taken into account at the time of the filing of the contested trade mark and at the time the action requesting annulment is filed.

On the concept of the relevant public (point 2), the Court of Appeals has recognised the generally expressed principle by the EU Community case law, according to which the degree of notoriety of a trade mark is considered reached when it is known by a meaningful share/portion of the public interested in the products and services that said trade mark covers, not being required a specific percentage of the public so defined.

The First Board of Appeal, therefore, to determine the notoriety of the invalidating mark has considered the specialised public of professionals and enthusiasts to the products distinguished by it.

Finally, regarding point 3, the elements that contribute to determine whether the trade mark is known to the relevant public, the Appellate judge has confirmed that all relevant elements of the case must be taken into consideration, including the degree of knowledge or notoriety of the trade mark with regard to the relevant public, the intensity, geographical scope and duration of its use, of its promotion, including advertising and exhibition exposure.

In other words, the First Board of Appeal has followed the orientation developed at a European Community level according to which the level of knowledge required cannot be defined in the abstract, but must be evaluated on a case-by-case basis. Consequently, in the case in question, in addition to sales invoices, the duration of registration of the trade mark at national level and the duration of the use of the sign as a company name, were taken into consideration publications of the specialized press, articles appeared in newspapers and magazines, interviews released by celebrities, the production of documentaries related to the trade mark itself and its products. All elements considered as a whole have led to the affirmation of its well-known reputation and notoriety.

It is important to underline that, in analysing this issue, the criteria identified by the Court were applied with reference to what could be called "of reflex" notoriety, referred to in art. 6 bis of the Paris Union Convention, which confers invalidating power also to unused trade marks in a country of the union and yet known to its public through use made in another foreign country.

In other words, the “renown” of a trade mark that has achieved a considerable notoriety and reputation in its country of origin can be considered "of reflex" in other countries if known in such countries not because of a stable and direct commercial presence, but because of the mass media (press & film) effect, the advertising diffusion or even only because of people's mobility.

Alessandra Ferreri | SCF Studio Legale | aferreri@scflex.it

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