A substantial part of the Community

There are some strange things in European Community trade mark law, both the Regulation and the Directive. That much became apparent to me this morning, reading the first few pages of the trade marks chapters in Llewellyn & Cornish. Then along came the Court of Justice's judgment in Case C-301/07 Pago, which in itself doesn't seem very weird but which certainly has some weirdness around it.

Pago involved the Austrian fruit drink maker - yes, the famous one, obviously. I'm sure I have seen this product somewhere. Faced with what it optimistically reckoned to be a trade mark infringement, in the sort of absolutist way trade mark owners seem to look at this sort of thing, it claimed that Tirolmilch - who had the temerity to sell a rather different drink in a bottle not unlike that depicted in one of Pago's registered trade marks, the exiguous similarity evidently not counteracted by the application of the name LATELLA to the bottle - was infringing under Article 9(1)(c) of the Community trade marks regulation.

That article is, of course, the one that establishes dilution s a form of infringement. A trade mark can only enjoy its protection if it has a reputation. Pago's trade mark had, they thought, a reputation, but not outside Austria, so was that enough? And (the referring court went on) if it wasn't, could the trade mark owner have a remedy in Austria but not elsewhere in the Community where the mark did not have a reputation?

Call me old-fashioned, but I am baffled by the idea which the law seems to allow for of a trade mark without a reputation. How can a trade mark function without one? The law doesn't ask for any particular amount of reputation - it's not as if it has to be a well-known trade mark, which of course would open up another can of worms. In fact, the French version of the Regulation says "jouit d'une renommée dans la Communauté", and une renommé means (my fat Collins-Robert dictionary tells me) means fame or renown, and although "reputation" is also given as an alternative it seems to me that the French version is asking for something a bit stronger. Especially as all trade marks have some degree of reputation, even if it is vanishingly small.

The words "in the Community" also arise in Article 50, which deals with grounds for revocation. If the mark has not been used in the Community for five years , it is vulnerable. But does it have to be used throughout the Community, or will use in part of it be enough? And if part, does it have to be a substantial part, and if so what is a substantial part? It seems to me that the question is, in effect, the same.

In Case C-375/97 General Motors the Court decided (in a case concerning the Directive and the harmonised Benelux law) that a reputation in the Benelux, or part of the Benelux, was going to be good enough, and in the nature of these things the Court didn't have to go further - it deals in matters of principle, which the national courts have to apply. In Pago, the Court decided - coming perilously close, I would have thought, to getting involved in the facts - that Austria was a substantial enough part of the Community, and if there was a reputation there that was sufficient for Article 9(1)(c) to be engaged. By extension, use in Benelux (or in just one Benelux country), or in Austria, would be sufficient to overcome a non-use challenge. I don't like it.

Community trade marks already tend to be too broad in their scope, because the Office has a liberal approach to specifications - basically, applicants can file for whatever they like and try to establish enough use before the five years is up (whereas in the UK there could be a "bad faith" challenge). In principle, one of these vast registrations can be secured by using it for goods or services within the specification in Luxembourg, or perhaps somewhere with a similar population (just under half a million): Cumbria, perhaps. Which makes me think that CTMs are grossly overpowered and offer far too much scope to absolutists to monopolise commercial signs over unjustifiably wide territories.

In the single market, the importance of national boundaries is greatly reduced - but Pago shows that national markets remain important, and why should the trade mark owner enjoy the powerful rights given under 9(1)(c) in places where his trade mark remains unknown?