Decision on case C-328/06, Nieto Nuño, on art. 6 bis of the Paris Convention

Fabio Angelini

It actually happened. The ECJ has indeed partly overruled the AG opinion and decided the case as I had hoped (see the post on the AG opinion): in an unusually terse and short decision, the ECJ ruled that while the Community provision being interpreted lacks a definition to that effect, a trade mark certainly cannot be required to be well known ‘throughout’ the territory of the Member State and it is sufficient for it to be well known in a substantial part of it.

However, the customary meaning of the words used in the expression ‘in a Member State’ precludes the application of that expression to a situation where the fact of being well known is limited to a city and to its surrounding area which, together, do not constitute a substantial part of the Member State.

Therefore, even though the ECJ recognized that under certain, limited circumstances unregistered marks can still be protected (if national provisions so allow), Article 4(2)(d) of the Directive is to be interpreted as meaning that the earlier trade mark must be well known throughout the territory of the Member State of registration or in a substantial part of it.

I applaud this decision (it is not a mystery that I consider unregistered rights to be an anachronism which should no longer find any space whatsoever in modern society). Even thought the criteria is still uncertain (what in practice a substantial part of a member state is?) yet it elevates the threshold of protection by clearly refusing to accept that any amount of local renown may suffice. Hopefully, this decision will signal also to many EU member states (and Court thereof) which are so woefully attached to these rights the necessity to reconsider the extent of protection to be recognized to unregistered rights