CJEU Backs Unilever in Deodorant CTM Row

The Court of Justice of the European Union (CJEU) has said that Community trademark (CTM) owners can successfully oppose trademark applications in member states where they do not sell their product if they can demonstrate that their mark has a reputation in a substantial part of the EU.


The CJEU ruled on the Iron & Smith v Unilever CTM dispute on September 3. At the centre of the dispute was Iron & Smith’s application to trademark the phrase ‘Be impulsive’ at the Hungarian Intellectual Property Office (HIPO) in 2012.


Unilever opposed the national application on the grounds that it was too similar to its CTM for its deodorant product Impulse. HIPO agreed and rejected the application, stating that the ‘Impulse’ mark had established a reputation across the EU.


Hungary-based Iron & Smith appealed against the decision to the F?városi T?rvényszék (Municipal Court of Budapest) arguing that Unilever’s Impulse product only represented 5% of the deodorant market share in the UK and 0.2% in Italy. Unilever does not sell its Impulse branded-deodorant in Hungary.


The Budapest court, however, was unsure of whether under article 4(3) of Directive No. 2008/95 a CTM has to have a reputation within the relevant member state to oppose an application in that same country.


In response, the CJEU said that “if the reputation of an earlier CTM is established in a substantial territory of the EU ... which does not have to be the state in which the application for the later national mark was filed, it must be held that the mark has a reputation in the EU”.


The Budapest court had also sought clarification on how a CTM owner can establish that it has reputation outside the borders of a nation state.


The CJEU said a CTM owner can succeed in opposing a mark if it can show that a “commercially significant” part of the relevant public is familiar with the earlier mark, makes a connection between it and the later national mark and can demonstrate either “actual and present injury to its mark”.


The decision is consistent with the opinion of Advocate-General Nils Wahl, who in March said that a CTM owner is afforded protection under article 4(3) of Directive No. 2008/95 if it can demonstrate that a “commercially pertinent portion” of the relevant public in that member state will make a link with the earlier trademark.