Is reputation in one Member State sufficient for an infringement action based on Art.9(1)(c). AG Sharpston offers opinion.

In C-301/07 PAGO v Tirol Milch, the defendant sold a "me too" drink called Lattella whose get-up (shape, colour, cap, label) resembled in several respects the Claimant's PAGO drink. It was accepted that there was no likelihood of confusion because of the very different nature of the word marks. The real issue was thus whether the Lattella drink took unfair advantage of the Claimant's Pago drink by reason of the similarity of designs.

The issue of importance was whether one could bring proceedings for infringement of a Community Trade Mark under Art.9(1)(c) where the reputation of the mark only extended to Austria. AG Sharpston held that whether a CTM has a "reputation in the Community" within the meaning of Art.9(1)(c) was not dependent on national boundaries but had to be determined by reference to factors such as the proportion of the public which knows the mark, the importance of the area where the reputation exists, etc (i.e. the General Motors factors). The AG also made clear that if one could not satisfy such criteria, there was no question of the CTM having limited protection to the area where the CTM did have a reputation. 

It is likely that this test will be followed in the ECJ. However, it is of note that CTMs are intended to have at the very least, the same rights as national trade mark. Thus, Art.34(2) which permits the surrender of a national mark for a CTM states that the proprietor of the CTM shall be deemed to have the same rights as he would have had if the earlier trade mark had continued to be registered. However, if e.g. Macedonia is not considered a substantial part, then there is a positive disincentive to surrender one's national mark for a CTM and one would have less rights if the reputation of the national mark was confined to Macedonia. OHIM takes the view in its Guidelines that a reputation in one Member State is sufficient (see 2004 Guidelines, 353). See, generally section 3-130 in IPE.