EUROPEAN COURT OF JUSTICE: "CHEVY" DECISION

Kador & Partner, Munich, Germany, Dr. Elisabeth Vorbuchner LL.M.

The European Court of Justice has issued a decision dealing with the concept of a trade mark which "has a reputation" in "a Member State" as required in Article 5 (2) of the Trade Mark Harmonization Directive. Since, in the specific case, the trade mark concerned was registered as a Benelux trade mark, which is valid in three Member States, the question to be decided was whether the trade mark concerned must have a reputation throughout the Benelux countries or whether it is sufficient for this condition to be satisfied in part of that territory. This question was answered by the Court in the manner that it is sufficient for a Benelux trade mark to have a reputation in a substantial part of the Benelux territory, which part may consist of a part of one of the Benelux countries.

More generally, the Court stated that, in order to have acquired a reputation, the trade mark must be known by a significant part (not by any given percentage) of the public concerned by the products or services covered by the trade mark. In examining whether this condition is fulfilled, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of investments made in promoting it. Source: Jennifer Clayton-Chen, Kador & Partner, Munich, Germany