The PAGO case: extent of protection to mark of reputation in one Member state only

Fabio Angelini

With little notice (possibly because the language of the proceedings is German), an Austrian Court, the Oberster Gerichtshof, on 26 June 2007 has referred to the ECJ with case C-301/07, a request for a preliminary ruling on couple of extremely interesting questions:

1. For the purposes of Article 9(1)(c) of the Council Regulation (EC) No 40/94 (CTMR), is a Community trade mark (CTM) protected in the whole of the Community even if it has a 'reputation' only in one Member State?

2. If the answer to the first question is in the negative: is a mark which has a 'reputation' only in one Member State protected in that Member State under Article 9(1)(c) of CTMR, so that a prohibition limited to that Member State may be issued?

The two questions are of great importance because they address the conflict between the CTM’s “unitary character” and the interpretation of a number of CTMR rules which seem no longer capable to consistent with the dimensions of the EU (the so called CTM’s geographical dilemma). On the surface one may think that the ECJ has an easy task in answering the two questions. For the first one, it seems that the ECJ has to choose between two options:

a. according to the principle of the unitary character the first possibility is that reputation in one country suffices and thus the mark may be protected allover the EU; or

b. one country is not enough and thus the CTM may not be protected allover the EU.

Accordingly, the answer to the second question seems deceptively simple: if the ECJ said b., then the CTM should be protected at least in that Member State. But looking at the issues involved I do not believe at all that the ECJ will answer that way. I believe (also in light of a number of things which the ECJ and the CFI have been saying lately in their decisions) that it is fundamentally wrong to approach the geographical scope of protection of the CTM in terms of Member States. Even though it is always an exercise in futility to speculate about future decisions (especially when one is not involved and therefore has no ways to interfere in the final outcome), I hope that the ECJ will answer saying that in light of the CTMR system rationale and objectives, the finding of a reputation relevant for a CTM must be the result of a balanced qualitative and quantitative analysis which does not require a numerical count of Member States involved. I also hope that the ECJ will not dodge the second question by saying that in light of the fact that it previous answer deprives the latter question of meaning. In my view the ECJ should go on and say that in case the national Court were to find that under the circumstances the CTM does not have reputation which is relevant under the CTMR, then art. 9(1)(c) is not applicable at all, since the rationale and the objectives of the CTMR do not coincide with those on national registrations.

Will the ECJ have the guts to say so? We can only wait and see. Stay tuned.