## Facts

- General Motors Corporation (GM) owned an earlier Benelux registered trademark “CHEVY,” registered in 1971, used as a designation for a brand of motor vehicles.
- Yplon SA, a Belgian company, used the sign “CHEVY” for detergents and cleaning products and held rights in that sign for those goods.
- GM brought proceedings in Belgium (Tribunal de commerce de Tournai) seeking to stop Yplon’s use of “CHEVY,” relying on Benelux rules implementing Article 5(2) of First Trade Marks Directive 89/104/EEC, which extends protection for marks with a reputation to certain uses on non-similar goods where use without due cause takes unfair advantage of, or is detrimental to, the mark’s distinctive character or repute.
- The Belgian court stayed the case and referred questions to the Court of Justice for a preliminary ruling on how to interpret the “reputation in the Member State” requirement in Article 5(2), including its territorial reach in the Benelux system.

## Issues

1. What level of recognition is required for a registered trade mark to have a “reputation” for purposes of Article 5(2) of Directive 89/104/EEC?
2. Must the mark’s reputation extend throughout the relevant territory, or is reputation in a substantial part of that territory sufficient (including in a unitary Benelux registration area)?

## Decision

- The Court held that, to satisfy Article 5(2)’s reputation requirement, the registered mark must be known by a significant part of the public concerned by the goods or services covered by the registration.
- The Court stated that national courts must assess reputation by considering all the facts, including the mark’s market share, the intensity of its use, the geographical extent and duration of its use, and the size of the investment made by the undertaking in advertising the mark.
- The Court held that the reputation requirement is met when the mark has a reputation in a substantial part of the territory of the relevant Member State; it cannot be required to have a reputation throughout the entire territory.
- For the Benelux territory, the substantial-part requirement may be satisfied by reputation in a substantial part of that territory, which can consist of a part of one of the Benelux countries.
- As a preliminary ruling, the Court did not decide whether GM’s mark in fact had the required reputation, nor whether Yplon’s use took unfair advantage of or caused detriment without due cause; it left those applications to the referring court.

## Legal Principles

- A mark has a “reputation” under Article 5(2) of Directive 89/104/EEC when it is known by a significant part of the relevant public for the goods or services for which the mark is registered.
- Reputation is determined by an overall evaluation of case-specific factors, including market share, intensity of use, geographical extent and duration of use, and investment in advertising; no single factor is decisive.
- The territorial condition for Article 5(2) is satisfied by reputation in a substantial part of the relevant territory; complete coverage of the territory is not required.
- In the Benelux system, reputation in a substantial part of the Benelux territory may be shown even if that part lies within only one of the Benelux countries.
- Establishing reputation is a threshold step; a claimant must still prove the additional Article 5(2) elements (use without due cause and unfair advantage or detriment) under national law applying the Directive.

## Conclusion

General Motors Corporation v. Yplon SA holds that Article 5(2) protection for reputed marks applies where the mark is known by a significant part of the relevant public and has reputation in a substantial part of the territory (including, for Benelux marks, potentially within part of a single Benelux country), with the national court to apply a multi-factor assessment and then decide the remaining unfair-advantage/detriment questions.


General Motors Corporation v. Yplon SA, 1999 E.T.M.R. 950 (1999)