Pago: Sharpstone says one country not enough!

Fabio Angelini

Today AG Sharpstone delivered her opinion on case C‑301/07, AGO International GmbH v. Tirol Milch registrierte Genossenschaft mbH. The geographical scope of CTM is still largely undecided. On the one hand the unitary character has been interpreted by OHIM as indicating that use in one country suffices to maintain rights allover the EU. But what about renown? Is renown in one country sufficient to either protect trademark rights against dilution in another country where that renown does not occur? And since we are there, can a CTM which enjoys renown only in one country be protected at all against dilution even in that country? Pago revolved squarely around these last two issues and the AG said a resounding NO!:

As to the first question, the AG said that a CTM is protected in the whole of the Community on the grond that it has a ‘reputation in the Community’ within the meaning of Article 9(1)(c) CTMR if it has a reputation in a substantial part of the Community. What constitutes a substantial part of the Community for that purpose is not dependent on national boundaries but must be determined by an assessment of all the relevant circumstances of the case, taking account, in particular, of (i) the public concerned by the products or services covered by the trade mark and the proportion of that public which knows of the mark and (ii) the importance of the area in which the reputation exists, as defined by factors such as its geographical extent, population and economic significance.

As to the second, the AG rightly and logically said NO as well: a CTM which has a reputation in an area which is not a substantial part of the Community in that sense does not enjoy, under Article 9(1)(c) of CTMR, protection limited to that area. Consequently, a prohibition against infringement limited to that area may not be issued.

Now, this is only the AG opinion and may not be followed by the ECJ, but I’d bet the blogmaster’s sport car that it will. After all, back in 2005 I had stated the more or less the same things in my paper (for one let me be self referential!) The CTM Geographical Dilemma, which was published in the Harmonisierung Des Markenrechts, Festschrift für Alexander von Mühlendahl, Carl Heymanns Verlag KG, Köln, 2005, thus I must hope that! When the ECJ will rule, I will come back to this for a longer and more comprehensive assessment of what it might mean in the CTM system at large. Stay tuned.