A trademark is only famous if you can prove it

When one wants to prevent others from registering a trademark similar to theirs that is very well known, the fame of the trademark – that certainly cannot be taken for granted – must be proved.

In a recent case (opposition proceedings No. B 3-106 137), the EUIPO (European Union Intellectual Property Office) reiterated that in order to win an objection based on the reputation of the earlier trademark, all the requirements of Article 8(5) CMUE must be proved, which are as follows:

  • the trademarks in comparison must be identical or similar;
  • the earlier trademark has a reputation;
  • there must be a risk of prejudice, that is that the use of the contested trademark could take unfair advantage of the repute of the earlier trade mark.

With regards to point (ii), it must be the opponent who provides the examiners with a whole series of evidence showing that its trade mark – which reputation is invoked – is indeed known to a significant part of the public interested in the products to which the trademark relates.

In determining the level of reputation, the decision states, it must be taken into account, among other things, the market share held by the trademark (i.e. the percentage of the total sales obtained in a given sector of the market), the intensity, the geographical extent, the duration of its use, and the extent of the investments made by the company to promote it.

The evidence submitted must therefore meet the above criteria and, as the EUIPO points out, must come from independent and authoritative sources.

In the case at hand, however, the opponent, although it had submitted evidence demonstrating turnover and advertising investments, had not provided any objective evidence and, even, had shown that such evidence was supported by independent sources.

Therefore, in highlighting that the evidence provided was insufficient since, among other matters, it came from the same opponent, the Office pointed out that the latter should have, at least, provided other evidence.

In particular, the Office points out that the most suitable means to demonstrate the degree of knowledge of the trademark are opinion polls, market surveys by independent entities on the perception of the sign among the public, independent indications on the volume of sales and as well as the awards or prizes obtained by the trademark.

In the present case, in the lack of such documentation, the EUIPO rejected the opposition on the basis that the reputation of the earlier trademark had not been proven, pursuant to Article 8(5) EUTMR.