If a Community trademark has a reputation in the Community, pursuant to Articles 9 (1) (c) and 8 (5) CTR, the scope of protection can be extended to goods or services which are dissimilar to those for which the mark is registered. In the past, there existed uncertainty as to the territorial interpretation of the expression “has a reputation in the Community”. The Supreme Court of Austria was seeking clarification on this issue and referred (among others) the following question to the European Court of Justice (ECJ) for a preliminary ruling:
Is a Community trade mark protected in the whole Community as a “trade mark with a reputation” for the purposes of Article 9 (1) (c) of the regulation if it has a “reputation” only in one Member State?
What gave rise to this question were legal proceedings in which the proprietor of the earlier Community trademark, which is well known in Austria, was seeking an injunction restraining use throughout the entire Community and based his application on Article 9 (1) (c) CTR. Thus, the Supreme Court was faced with the question if a trademark enjoying a reputation in Austria may be considered to be a trademark that “has a reputation in the Community” for the purposes of Article 9 (1) (c).
In its decision C-301/07 from October 6, 2009, the ECJ ultimately answered this positively and interpreted Article 9 (1) (c) as meaning that the Community trade mark must be known by a substantial part of the relevant public in a substantial part of the territory of the Community. According to the ECJ, the territory of the member state concerned can be regarded as forming a substantial part of the territory of the Community.
For the future, it therefore has to be assumed that a Community trademark may enjoy extended protection as a mark with a reputation already if it has a reputation only in a single member state.