## Facts

- Iron & Smith Kft. applied in Hungary to register a national figurative mark featuring the slogan “be impulsive” for Class 3 goods (cosmetics and perfumery).
- Unilever NV opposed registration based on its earlier Community trade mark “IMPULSE” covering, among other goods, perfumery.
- Unilever asserted that “IMPULSE” had a reputation in the European Union, supported by evidence of strong market position and advertising primarily in the United Kingdom.
- In Hungary, “IMPULSE” had limited availability and only short-term use.
- The Hungarian Intellectual Property Office upheld the opposition and refused the application, concluding the later mark would take unfair advantage of, or be detrimental to, the earlier mark’s distinctive character or repute.
- Iron & Smith challenged the refusal before the Budapest Municipal Court, arguing that protection for reputed marks was unavailable because “IMPULSE” lacked a reputation in Hungary.
- The national court stayed proceedings and sought a preliminary ruling on the territorial scope of EU-wide “reputation” and the conditions for protection where reputation is not established in the Member State of the later filing.

## Issues

1. Whether an EU (Community) trade mark can have a “reputation in the European Union” when that reputation is shown only in a substantial part of the EU that may consist of a single Member State.
2. Whether, and under what conditions, the owner of an EU trade mark with EU-wide “reputation” can oppose a later national mark in a Member State where the earlier mark lacks reputation with the relevant public.
3. What must be proven regarding local public familiarity, the existence of a mental “link” between signs, and actual or threatened injury (unfair advantage or detriment).

## Decision

- The court held that an earlier EU trade mark has a “reputation in the European Union” if it is reputed in a substantial part of the EU, which may, depending on circumstances, correspond to a single Member State.
- The Member State where the later national mark is filed need not be the same Member State in which the earlier mark’s reputation is established.
- The court held that opposition may succeed even where the earlier mark is not reputed among the relevant public in the Member State of the later filing, if the proprietor proves:
  - a commercially significant part of the relevant public in that Member State is familiar with the earlier mark,
  - that public makes a connection between the earlier and later marks, and
  - considering all relevant factors, there is actual and present injury, or a serious risk of future injury, to the earlier mark’s distinctive character or repute.

## Legal Principles

- “Reputation in the European Union” for an EU trade mark does not require reputation throughout the entire Union; reputation in a substantial part of the EU may suffice, even if that part is one Member State.
- Standards developed for “genuine use” are not determinative for assessing “reputation”; reputation is evaluated by the degree to which the mark is known by a significant portion of the relevant public in the relevant territory.
- Where the earlier mark’s reputation is not established in the Member State of the later filing, enhanced protection may still apply if local consumers are sufficiently familiar with the earlier mark and form a mental association (“link”) with the later sign.
- Relief under the reputed-mark provision requires proof of one of the recognized forms of dilution-type harm (unfair advantage, detriment to distinctive character, or detriment to repute), or a serious risk of such harm, based on an overall assessment of relevant circumstances (including similarity of signs, reputation strength where established, and relationship between goods).

## Conclusion

An EU trade mark may qualify as having a reputation “in the Union” based on reputation in a substantial EU territory that can be a single Member State, and it may be enforced against a later national mark in another Member State if commercially significant local awareness, a mental link, and actual or seriously threatened dilution-type injury are shown.


Iron & Smith Kft. v. Unilever NV, Case C-125/14 (C.J.E.U. 2015)