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The Spanish CTM Tribunal on how to prove reputation: "Your pile of advertisement inserts and press releases does not look that impressive".
In the Judgment no. 427 ( appeal case 260/2009), the Spanish CTM Tribunal had the chance of interpreting article 9.1 c) of the CTM Regulation. As most of our reads surely know by heart (or nearly so), such article reads as follows:
"A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(…)
any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark".
In the commented case, the reputation of the claimant's CTM upon which the infringement case was construed was vigorously contested by the respondent.
Following the doctrine of the ECJ in Lloyd vs. Klijsen case (C-342/97), the Spanish CTM Tribunal concluded that claimant failed to prove "reputation" as it only produced "advertisement inserts in magazines" and "press releases" related to the litigious CTM.
Below: Beware you CTM holder. Even this might not suffice to prove repute ...
Those "advertisement inserts in magazines" and "press releases" seemed not to impress the Tribunal when acknowledging repute. Instead, the Tribunal stated that reputation under art. 9.1 c) of the CTM Regulation could have been evidenced through statements from chambers of commerce and industry or other trade and professional associations, demoscopic studies, market analysis or expertises.
Posted by: Ignacio Marques @ 09.21Tags: Spain, CTM infringement, reputation.,
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