Broader Protection of Trademarks with Reputation in EU
Acts of EU law (Regulation 207/2009 - CTMR and Directive 2008/95 - TMD) provide for broader protection of trademarks with reputation. Such broader protection is not conditional upon establishment of a risk of confusion and it relates also to non-similar goods and services. The Directive 2008/95 leaves Member States of the EU free to introduce such extended protection into their legal systems. It is therefore important to understand what kind of test should be performed in order to establish the reputation and to what extent Member States are free to delimitate the scope of extended protection in relation to national trademarks. The task is not easy due to the fact that the relevant provisions of CTMR and TMD do not provide for any definition of the trademark with reputation and leave this matter to the jurisprudence of the CJEU.
From the jurisprudence of the CJEU it results that the test needed for establishment of reputation is different, on the one hand, in cases when we search for a link between the conflicting trademarks and, on the other hand, in cases when the reputation is the prerequisite for estab-lishment of one of the forms of injury (blurring, tarnishment or free-riding).
Apparently, the concept of the trademark with reputation is not regarded by some national courts as belonging to the EU law, and judgments rendered by some Polish courts are to some extent not in line with the concept of renowned trademarks adopted by the CJEU. However, the development of the jurisprudence of Polish courts in this respect and especially in respect of evidence requested in order to establish reputation of a given trademark is developing towards the lines elaborated by the jurisprudence of the CJEU and OHIM boards.
Protection of trademarks with reputation requires establishment of the link between the earlier trademark with reputation and the conflicting junior mark. The factors which need to be analyzed to establish the link are: the degree of similarity between the conflicting trademarks, the nature of the goods and services for which the conflicting trademarks were registered, the strength of the earlier mark's reputation and the degree of the earlier mark distinctive character. The relevant factors are interdependent among themselves. For instance, a low degree of similarity may be offset by the strong distinctive character of the earlier mark.
After establishment of the link the next step is the establishment of one of the forms of injury: blurring, tarnishment or taking unfair advantage of the reputation or distinctive character of the earlier trademark. The jurisprudence of the CJEU sheds some light on how the elements required for establishment of one of the forms of injury should be evidenced. Finally, the relevant provisions of the CTMR and the TMD provide for a negative premise which may create an obstacle speaking against the grant of broader protection. This negative premise is due cause which must be demonstrated by the junior mark owner. The nature and contents of the due cause requirement for many years have not been sufficiently specified, and only recently its scope has been outlined by OHIM. Since Polish law does not provide for the due cause prerequisite in the relevant provision of Industrial Property Law it is important to know if such default amounts to the improper implementation of the TMD.