Unilever succeed in Opposition of Trade Mark

The recent case of Iron & Smith Kft v Unilever NV (C-125/14) sought confirmation of whether it was correct in the first instance to allow an earlier Community Trade Mark holder to successfully oppose an application for a Trade Mark where the earlier mark has little or no reputation in certain member states of the EU.

The dispute was between Unilver who are the multinational owner of the 'IMPULSE' brand, (which produces a range of women's perfumed body sprays) and Hungarian company Iron & Smith. The Hungarian company tried to register a colourful figurative mark with the words 'Be Impulsive' which was opposed by the IMPULSE manufacturer.

Unilver's case was that they had sole large quantities of their product (claiming a 5% market share in the UK and a 0.2% market share in Italy) and that registration of the later mark would cause confusion amongst the public.

The Hungarian Intellectual Property Office agreed with this analysis and reached the conclusion that although Unilver did not hold a reputation in Hungary, they had proved that they had a substantial reputation in other parts of the European Union.

Iron & Smith appealed this decision which was then brought before the Court of Justice of European Union (CJEU) for a preliminary ruling which was handed down by Advocate General Wahl on 24 March 2015.

He considered the criteria in Article 4 (3) of the Trade Marks Directive (2008/95/EC) which states that a trade mark will not be registered or, if registered, will be declared to be invalid if it is identical with, or similar to, an earlier Community Trade Mark and is to be, or has been, registered for goods or services which are not similar to those for which the earlier Community Trade Mark is registered.  It also states that where the earlier Community Trade Mark has a reputation in the community and where the use of the later trade mark would take unfair advantage of, or be detrimental to, the earlier Trade Mark, then the mark should not be registered or if already registered, declared invalid. When considering the latter, AG Wahl said that 'where the earlier Community Trade Mark does not enjoy a reputation in the member state, it is necessary to show that a "commercially pertinent proportion" of the relevant public will make a link with the earlier Trade Mark'. This was proven by Iron & Smith.

The CJEU upheld the earlier decision and confirmed that the Trade Mark application was right to be opposed.