The Concept of Relevant Public and its Application in the EUTM System – Vasil Dundov

Introduction

The GLOCAL Effect
Interdependence between the functions of the trade mark and the relevant public
The two „approaches“ to the relevant public
The „Qualitative Approach“ to the Relevant Public: The Average Consumer
When does he „come into play“?

l . The objective ability of a sign to constitute a CTM

Likelihood of confusion in the context of Article 8
Unfair advantage / Detriment in the context of Article 8 (5)

Who is the average consumer?

1 . Private consumers (Average private ultimate consumer customer)

Business customers

Ill. The „Quantitative Approach“ to the Relevant Public: Degree of recognition of the mark among the public and its relevance

Relevant public in determining „strength “ of a trade mark in the context of likelihood of confusion
Well-known marks (Art. 8(2) (c) CTMR) and trade marks with reputation (Article 8 (5) CTMR)
Relevant public in the context of establishing genuine use (Art. 15; Art. 57 (l) (a) CTMR)
Relevant public in the context of Article 51 (l) (b) CTMR Trade mark turned generic in consequence of acts or inactivity of the proprietor
Relevant public in the context of Article 7 (3) — acquired distinctiveness through use
Conclusion
Introduction

In the world of the intellectual property, and particularly in the trade mark world, the public cannot be irrelevant. It comes from „the nature of the things“ that a trade mark is always turned to the public (in the meaning of all the persons — natural and legal — to whom the trade mark is addressed): it is trying to catch its attention, to startle it, to leave a mark in each and every targeted consumer’s mind so that the latter could associate a certain need of his of a good or service with the sign of which the mark is comprised. Every person goes to the market in order to satisfy certain needs of his; every trader’s attention is to meet those needs. For these events to take place eventually, a dialogue must be carried out between the person in need and the trader. The language for this dialogue is the trade mark — it is the message conveyed by the person who offers to the person who searches. The interlocutor of the trader in this conversation is the relevant public all persons who receive or might receive in the course of their natural market behavior the message, carried by the trade mark. A trade mark’s area of expertise is the PR. This is its „job“ — to identify one’s goods and services and distinguish them from those delivered by other undertakings; to tell the consumer „Hello, I come from this undertaking; and not from any other. If you want to repeat the experience you have had with me, look for this sign on the market“. This is the „economic“ relevance of the trade mark — the so called „commercial raison d’être“ of the trade mark.

The law, as a regulative system, naturally sets the rules of this dialogue. Thus, the economic relevance of the targeted public is sanctioned and becomes legal relevance. These rules govern the characteristics the trade mark, as a message, must possess in order for the dialogue to be adequate characteristics which alter in accordance with the level of attentiveness and sophistication of the interlocutor. That level, on its part, is dependent on the product or service marketed. It must be concluded then, that the notion of the consumers who get in contact or may get in contact with a trade mark in the course of their market behavior i.e. the relevant public, is in direct relation with the goods/services, covered by the mark and marketed by the trader. In the words of the Court, the public amongst which a mark must fulfil its required by law functions is „the public that is concerned by the trade mark, that is to say, depending on the product or service marketed, either the public at large, or a more specialized public, for example traders in a specific sector“ (Case 375/97 (General Motors), par. 24). Consequently, the question about the relevant public may be brought to: „Who is concerned by the designated goods or services?“

In my view, there are two conditions for a person to be considered „concerned“ by a certain product or service in the abovementioned meaning: l) he / she must have a need of it, that would „drive“ him / her go on the market in order to satisty it; and 2) he / she must have the capacity to acquire it on his / her own, i.e. the good or service must be available for him / her on the market without permission (e.g. prescribed pharmaceuticals, weapons), professional advice (specific goods, hi-tech), etc. These conditions are to be present cumulatively. If one of them is absent in relation to a certain group of people then that group should not be taken into account when making the assessments as regards the relevant public.

Certain needs are common for all persons and the products that satisfy them are defined as mass consumption products. Then it is only natural in the light of the foresaid, that a sign must have such characteristics which allow it to fulfil its essential functions (identify commercial origin and distinguish clearly from other undertakings) among, virtually, everybody. In these cases (e.g. foodstuffs) the relevant public will be the public at large (actual and potential consumers). It is its perception of the sign which matters. On the other hand there are products that are (potentially) needed by the broad public, but are not freely sold on the market: the relevant public in these situations should consist of both the intermediaries whose opinion will determine the choice of the „end consumer“, and the „end-consumers“ who tend to influence the professionals’ perception more and more.

In the same time, if the designated goods have a very specific application or are exclusively destined to professional or industrial use, the relevant public will be limited to the specific purchasers (again, actual or potential) of the products in question as they will be the only ones who need that product. In these cases the ‘V end consumer“ will be the professional.

There are also products that concern various purchase groups (both professionals and „mass consumers“) with a certain specific legal effect of that factual situation, which will be taken account of later.

To be concluded in few words, the relevant public consists of the consumers, to which the marked goods and services are addressed and who are able to acquire them without necessarily ask for assistance / permission. These questions will be discussed in more detail below (Il. B).

The main task of this humble study is to point out the different „forms“ that the relevant public in the CTM system accepts in the interdependence with the marked goods and / or services, as well as to determine the two „approaches“ toward the so-defined relevant public in accordance with the legal requirements before the trade marks as regards their functions and with the legal effect that took or could have taken place.

The GLOCAL Effect

The system established by the Council Regulation Ng 207/2009 (CTMR) is intended to afford proprietors the possibility of securing by registration a right with validity throughout the European Union. The validity and the scope of protection of a CTM must be considered by reference to the Union as a whole because of its „unitary character“, as Article I (2) CTMR provides. It follows from that provision that the conditions for registration of a CTM are to be interpreted as a European, i.e. autonomous criteria. The acquired distinctiveness of a 3D mark — form of the chocolate bar BOUNTY — is to be assessed in relation to all relevant markets, i.e. in the case of a 3D mark — all national markets, by a country-by-country analysis (see Case T-28/08 (MARS), par. 46). Another example, when determining whether there is breach of public order or morality (an absolute ground for refusal), the examiner may not apply the standard of a particular state but rather a European one. Thus, in some cases the relevant public, concerning the CTM system, will actually consist of „27 relevant publics“ because of the territorial scope of the Community trade mark. Actually, the number of „relevant publics“ depends on the particular circumstances in each case and the relevant „sub-markets“ that can be recognized, for example language areas.

It is from the principle of the single market that the notion of the „global“ (European) relevant public is derived. It follows from that notion that: l) a CTM should respond to the legal requirements set in the CTMR, in respect to the Union as a whole; and 2) that the registration has equal legal effect throughout the Union as a whole (a perfect realization of that legal intention is the provision of Article 9 ( l ) (a) which affords protection of a CTM proprietor against use of an identical sign for identical goods/services „in the course of trade“, i.e. virtually in any part of the EU). However, it should be stated, that the notion of the „Global relevant public“ lives together with that of the „Local relevant public“ in the CT M system. There are provisions that explicitly sanction the relevance of a „partial“ public. Thus, article 7 (2) CTMR excludes an application from registration if a ground for refusal pertains „in only part of the Community“. The 01-11M Guidelines particularize that „a part of the Community“ is one Member State or a group of member states, but not a part of a Member State, however large that might be. It follows from here, that in some cases the „national“ relevant public is still relevant on a Community level. Pursuant to that provision, the global relevant public disintegrates, especially at linguistic level („the relevant section of the public targeted defines the CFI in the case T-34/00 (EUROCOOL) – is English-speaking consumers“).

For example, if a word mark is immediately and without further reflection descriptive in Bulgarian there exists an absolute ground for refusal in relation to it, even if the applicant in no way plans to step into Bulgarian market. In this case the Bulgarian average consumer, for whom the descriptive meaning is immediately apparent and therefore non-distinctive, equals the „European“ average consumer (see R-789/2001-3 TITAN— The Board of Appeal states that „In order to assess whether a word such as ‘TITAN’ is descriptive, it is therefore necessary to be in the place of German-, Danish- and Swedishspeaking consumers.“). Another example, a breach of a moral rule that exists only in the Bulgarian society, i.e. among Bulgarian consumers, should not be relevant as a ground for refusal on a Community level, because Article 7 (l ) (t) CTMR must be interpreted as a „European criterion, irrespective of a looser or stricter level of morality in different regions of the Community, but Article 7 (2) remains applicable as to the meanings in different languages or to the presence of social, political or religious phenomena in different Member States“ ^l. This co-existence of an autonomous European standard and a national standard should always be taken into account when defining the relevant public. That „GLOCAL“ effect (by reference to the Oscar-nominee movie „Up in the air“) might also be recognized in the provision of Article 8 (2) (c), which grants protection to well-known marks, which in context of the application of Article 6bis of the Paris Convention for the Protection of Industrial Property (of March 20, 1883, last amended on September 28, 1979), may be well-known in one sole country.

Interdependence between the functions of the trade mark and the relevant public

In the trade the trade mark performs two essential functions — it identifies the product in respect of which registration is applied for as originating from a particular undertaking and distinguishes that product from products of other undertakings. ‘These functions often overlap (even on a linguistic level: separated in judgments of the Court through the conjunction „thus“ – Case C299/99 Philips [2002] ECR 1-5475, par. 35), but nevertheless they are to be viewed separately. The identifying ability of the sign is its objective ability to comprise a trade mark that is, in the first place, the distinctive, nondescriptive and non-deceptive character of the sign applied for. The distinguishing ability, on the other hand, must be assessed by reference to other trade marks and, therefore, it is analyzed when opposed by a proprietor of another trade mark. Nevertheless, in making these assessments account should be taken of the targeted consumers of the goods and services in question. The public’s perception, or that of a particular part of it, is a legal condition both for the lawful registration of a trade mark and for the enforcement of the rights of its proprietor. Therefore, the correct qualification of the relevant public is a crucial moment in the proper functioning of the CTM system.

Apart from indicating origin, a trade mark may also exercise other functions worthy of protection. More particularly, the Court of Justice confirmed that a trade mark can offer a guarantee that all the goods coming from a single undertaking have the same quality (guarantee function) and that it can serve as an advertising instrument by reflecting back the goodwill and prestige it has acquired in the market (advertising function). The ability of performing these functions is not inherent to the trade mark, but it is acquired through use and promotion of the mark, which result in its enhanced distinctiveness. When obtained, these functions are the most valuable for the owner of the mark. (The suggested price of the Coca-Cola trade mark is 70 billion dollars, while its assets are evaluated at 25 billion. ²) The acquired

The Manual concerning proceedings before the Office, Part B, pg. 51

2 Al Ries and Laura Ries, „The Origin of Brands“, pg. 19

distinctiveness must be assessed in relation to the public’s perception of the mark — when consumers (in the broadest sense of the word) recognize your mark and associate your production under that brand with high and constant quality, your trade mark enjoys stronger protection by law, namely through the provision of Article 7 (3), Article 8 (2) (c) and Article 8 (5) CTMR.

C) The two „approaches “ to the relevant public

There are, if my observations and considerations are somewhat correct, mainly two different perspectives in which the concept of the relevant public is interpreted in the context of the CTM system. On the one hand, there is „the average consumer“ as a rather objectified concept of a purchaser / user of the goods and services covered by the trade mark who is „reasonably wellinformed and reasonably observant and circumspect“ and whose level of attention and sophistication is likely to vary in accordance to the category of goods or services in question. This is the average member of target group (in the meaning of all consumers to which the marked goods / services are addressed). On the other hand, we have the notions of „significant part of the public concerned“ or the „substantial part of the Community“, as measures regarding the degree of knowledge and recognition of the mark among the public — the so called „knowledge thresholds“ which basically determine the „strength“ of a trade mark.

These two „visions“ on the relevant public differ, essentially, in the subsumtions which the law-applier must perform when determining if a certain legal effèct has taken place, respectively would lawfully take place under certain additional conditions (namely registration…). For example, when considering the inherent ability of a trade mark to fulfil its functions to identify the goods or services coming from one undertaking and distinguish the latter from others, the examiner must „take the seat“ of „the average consumer“ must borrow his mind and perceive the (non-)distinctive, (non-)descriptive, (non-)deceptive etc. character of the sign in question. In the room next door the Opposition Division „calculates“ the degree of market recognition, obtained by a registered and used trade mark, by looking at opinion polls, consumer surveys, proves of turnover etc., in order to certify whether an earlier mark possesses enough „strength“ to substantiate likelihood of confusion / detriment / unfair advantage.

It should be clearly stated that in both cases the relevant circles are actually the same — the persons targeted by the undertaking, i.e. its potential customers, intended recipients. Out of them must the relevant average consumer be „extracted“; and in relation to them must a trade mark be recognized as „weak“ / „strong“ / reputed / well-known. It follows that the ohject is the same; it is the point of view toward it that differs. The two approaches that I will (try to) examine in the following paragraphs may provisionally be called, respectively, „qualitative“ and „quantitative“ approach to the notion of relevant public.

The „Qualitative“ Approach to the Relevant Public: The Average Customer
A) When does he „come into play“?

When is the public relevant in the „form“ of the average consumer (customer) ^[1]? Substantially, in any case where it must be determined whether the claimed mark is inherently capable of fulfilling its functions, i.e. to allow the targeted public („the intended recipients“ — (EUROCOOL, par. 34)), in the context of an a priori examination apart from any actual use of the sign, to identify the marked goods and services and distinguish them from those of other undertakings when they come to make a choice in purchasing those goods or services (Case T -87/00 Bank flir Arbeit und Wirtschaft v OHIM (EASYBANK) [20011 ECR 11-1259, paragraph 40, and Case T-88/OO Mag Instrument v OHIM (Torch shape) [2002] ECR 11-467, paragraph 34). The determination of the consumer’s mind is the crucial element of the lawful and correct prognosis of the perception of the sign by the target public. And that perception is relevant in considering:

The objective ability of a sign to constitute a CT M — relevance of the average consumer in the course of the examination of a CTM application:

Distinctiveness (Article 7 (1) (b) CTMR) — whilst the EC.J (all marks have ‘-a greater or lesser capacity to identify the goods or services for which it has been registered as coming from a particular undertaking“ (C-342/97 (Lloyd), par. 22) derives the notion of distinctiveness from the function of a trade mark, according to the Office the notion of distinctiveness is to be viewed from the stand point of the consumer. The Court has stated that the distinctiveness is the inherent ability of the mark to identify the goods/services as coming from a particular undertaking thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (Case T-173/00 K WS Saat v 01-11M (Shade of orange), paragraph 27). The distinctive character of a trade mark must be assessed by reference, first, to the goods or services in respect of which registration is sought, and, second, in relation to the perception of the section of the public targeted, which consists of average consumers of the goods or services concerned, who are reasonably well informed and reasonably observant and circumspect (see Joined Cases C456 P and C-457 P Henkel v OHIM [2004] ECR 1-5089, par. 35)). Here we should look at the average consumer to whom the mark is addressed with his average distinguishing and memorizing abilities — with a mind on the higher level of attention and sophistication that the customers of certain goods / services show. The considerations to be made are basically described in Case T-441/05 (WC; / OHIM): „It [is] therefore appropriate . to examine, in the context of a specific examination of the potential capacity of the sign proposed for registration, whether there appeared to be no possibility that that sign may be capable of distinguishing, in the eyes of the public to which it is addressed, the goods or services referred to from those of different origin“.

The legal effect in common lines is — the higher the degree of attention and sophistication of the targeted consumer, the better the chances that the sign will fulfil its trade mark functions. In the IVG Case the Court of the First Instance annuls the Board of Appeal’s decision on ground that, essentially, the latter did not determine correctly the relevant section of the public, which in this case constitutes a very attentive public in the light of the specific nature and high price of the transactions carried out by the undertaking in question, thus admitting implicitly that the distinctive ability of a sign is dependent on the inherent qualities and the natural market behavior of the targeted consumers. It is accepted in case-law that a very attentive consumer would take enough time to enquire into the sign’s various possible functions and mentally to register it as a trade mark, even if the latter would not otherwise immediately indicate to him the origin of the object of his intended purchase (see case T-320/03, LIVE RICHLY, par. 78). Having in mind the aforesaid and the ground for refusal of the Board of Appeal in this case, namely lack of distinctiveness, it follows that the consideration of the higher level of attention and sophistication of the relevant public might result into admitting distinctiveness to an otherwise non-distinctive sign.

Descriptiveness (Article 7 (l) (c) It has been established in the Jurisprudence that when terms are used in a specialist terminology to designate the respective characteristics of the goods and services, the sign is to be considered descriptive even though the descriptive meaning is not apparent to the relevant consumers to which the goods and services are addressed. Moreover, this ground for refilsal is, in general, substantiated with the „need to keep free“ of the sign in order for other traders to be able to use it lawfully.

These statements may lead to the conclusion that the descriptiveness is an objective characteristic of the sign, i.e. it is not related to the targeted consumers. Yet, in the Case T-237/01 (Alcon) the CFI states that the question „whether a mark is customary (which overlaps to a great extent with „descriptive“) can only be assessed… on the basis of the target public ‘s perception of the sign“. Furthermore, the Court based its decision on the fact that „in specialist circles (i.e. the relevant public in this case) the term BSS had become customary as a generic indication for „sterile solutions for ophthalmic surgerv“. (Would the Court bother with the problem of the intended public if it was not relevant?)

It is of vital importance to note, here again, that the public addressed by a trade mark is often multiform (end users; retailers, intermediaries and other professionals; different territories etc.) and that the mark’s capacity of fulfilling the required functions may also differ among the various groups. In other words, a mark may be descriptive for some consumers, and nondescriptive for others. Article 7 (2) CTMR provides that existence of descriptiveness in relation to one of the purchaser groups suffices for a refusal.

In conclusion, in order for this ground for refusal to be applied the sign in question must be descriptive at least in the perception of a sector of the relevant public (and most of all toward customers in the production and distribution chain who are interested in being able to use the sign in their business).

Liability to deceive or mislead (Article 7 (l) (g)) — here, again, account should be taken of the relevant target group and the presumed level of attention and sophistication of its members (by way of analogy – see Gut Springenheide, which deals with the liability of deception of the relevant public by an advertisement). According to the practice of the Office, in order to fall foul under that provision, the mark must contain an objective indication about characteristics of the goods which is clearly in contrast to the reality contained in the list of goods and services. In my opinion, the lawful applying of this provision will still require determination of the average consumer and his presumed expectations in relation to the mark. The „mechanism“ is the same as when assessing descriptiveness account must be taken of the way the relevant public will perceive the sign in question, and particularly of the expectations about the nature, quality or geographical origin of the products, so that it can be determined whether they would be deceived or misled about the characteristics of the goods / services (see decision of the Third Board of Appeal of 16 March 2000 in Case R 322/1999-3 — XLS, paragraphs 22 and following). This would, virtually, be any case where the average consumer „could be led to take an interest in the products in question on the basis of qualities that they do not in fact possess“(TITAN, par. 29).
Contradiction to public policy or morality (Article 7 (l) (f)) — this provision requires a rather different view on the relevant public. It excludes from registration blasphemous, racist or discriminatory phrases, but only if that meaning is clearly conveyed by the mark applied for in an unambiguous manner, and thus is not concerned with bad taste or protection with feelings of individuals. Therefore, the relevant public for a sign to be objectionable under Article 7 (l) (I) are people of normal sensitivity (levels of information and attention do not play decisive role here). Looser or stricter level of morality in different regions of the Community should not be taken into account, but still Article 7 (2) remains applicable, which results mainly it two directions: l) If the word trade mark designates a racism in one language area (e.g. Bulgaria), it should be refused registration. In this case it will be the average European consumer of normal sensitivity that will matter, even though the mark will instantly be perceived as non-tolerant only by Bulgarian-speaking public; 2) If a word mark is of nature to insult a certain religious minority which is present only on part of the Community territory (in the meaning of Article 7 (2)), it e refused registration. This time, of relevance will be the normal sensitivity of an average member of that minority.

Likelihood of confusion in the context of Article 8 (1) (b) CTMR

In its Guidelines the Office has stated: „In the cases concerning likelihood of confusion, the Court has so far mainly equated the relevant public with the average consumer“. The perception of the marks in the mind of the average consumer plays a decisive role in the global appreciation of the likelihood of confusion (see Lloyd, par. 25). Thus, in fact every opposition decision defines the relevant public as regards its particular case.

Of significance here is the mind of the average customer towards whom there exists a risk of belief „that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings“ (Case C-39/97 Canon [1998] ECR 1-5507), i.e. who may get in contact with products of both the undertakings of the earlier and of the later mark. Thus, „if the average customer of one product or service is the average business customer, and the other public consists both of the average consumer customer and the average business customer, only the average business customer will be of relevance“^[2].

For the purpose of the global appreciation of the likelihood of confusion account should be taken of the fact that the average consumer „only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind“ (Lloyd, par. 26), and that he / she normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C-251/95 SABEL v Puma [1997] ECR 1-6191, par. 23). This position is, if I may say so, in favour of the likelihood of confusion.

The general rule as regards the relevance of the public in the context of the likelihood of confusion is: the enhanced sophistication and / or attentiveness of the public as regards the relevant goods and services either of the CTM application or of the earlier mark will generally be a significant indication against confusion: “ Where it is established in fact that the objective characteristics of a given product mean that the average consumer purchases it only qfter a particularly careful examination, it is important in law to take into account that such a fact may reduce the likelihood of confusion between marks relating to such goods at the crucial moment when the choice between those goods and marks is made.“ (C-361/04 Ruiz-Picasso and Others v Ohim [20061. par. 40).

Unfair advantage / Detriment in the context of Article 8 (5)

„The criterion relating to the relevant public… is one of the criteria to be taken into consideration in assessing the existence of injury, as regards any unfair advantage that may have been derived from the distinctive character or the reputation of the earlier mark within the meaning of Article 8(5) of Regulation No 40/94“ (see Case C-320/07 NASDAQ, par. 41).

In Case 375/97 (General Motors), par. 30 the Court stated that „once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected (respectively be taken unfair advantage of) without due cause“. It is only natural that such detriment or unfair advantage is related with the relevant public, and particularly with the likelihood of association which the average consumer would imply between the earlier reputed mark and the mark applied for. In par. 23 of General Motors the Court gave the important indication, that detriment or unfair advantage must be the consequence of an association of the conflicting marks in the minds of the public. The association, in psychology and in marketing, is the link between two concepts when the experience of one leads to the effects of the other. In any event, the association is a mental process and the ability to associate between different phenomena is strictly personal. However, for the purposes of prognosis in the sociological and marketing sphere, it is possible to establish a collective notion for associative ability, which characterizes a certain group of persons. Once the relevant public is determined (in the way discussed below, i.e. in accordance to the injury alleged), the associative ability of the average member of that public is to be taken into account. „The infringements referred to in Article 5(2) of [Directive 89/104], where they occur, are the consequence of a certain degree of similarity between the mark and the sign, by virtue of which the relevant section of the public… establishes a link between them even though it does not confuse them“ (see Case C-408/01 Adidas-Salomon and AdidasBenelux, par. 29). This link, which is obviously observed as a condition for the granting of the extended protection of reputed marks, is taking place in the mind of the average consumer of the goods / services of the earlier mark or of the later.

Infringement in the form of „taking advantage“ must be assessed by reference to the average consumers of the goods or services for which the later mark is requested (NASDAQ). The mechanism is, in general terms, as follows: the later mark designates certain products addressed to the persons who may come up to them in their natural market behavior. Now, if it is established that they are probably familiar with the earlier mark as well, the perception of the later will bring to mind the memory of the other, and thus is likely to result in a misappropriation of the attractive powers of the earlier mark or an exploitation of its image and prestige.

If detriment to the distinctive character or the repute of the CTM is claimed — the relevant public consists of the average consumers of the goods or services covered by the CT M with reputation (see C-252/07 (Intel Corporation), par. 35). The diminution of its attractiveness and / or the devaluation of its prestige are only relevant when they take place among its own targeted customers. Here, it must be considered whether the target public of the reputed mark could get in contact with the later mark.

Conclusion

So, to the question „when is the public relevant public“: obviously, the relevant public in the form of the average consumer of the goods or services, covered by the trade mark(s), is an essential element of most of the legal conditions for a sign to constitute a CTM, as well as for the proprietor to enforce his rights. In other words, the target public must be considered relevant when discussing almost all of the grounds for refusal absolute as well as relative of an application. It is also an element of the qualification of infringement of the proprietor’s exclusive rights in the form regulated by the provision of Article 9 (l) (b) of the CTMR, namely that there exists a likelihood of confusion in part of the public, or, in the cases covered by Article that there exists a likelihood of dilution of distinctiveness / of misappropriation with a reputed mark’s prestige.

Basically, the necessary assessments are being performed by the responsible bodies by taking into account „the view of the average consumer“. The examiner must take the position of the relevant consumer and see through his eyes the questioned features of the mark. It stands to reason that this is a mental activity which is rather abstract and often not too close to the actual consumers’ audience. This is why the Court has not ruled out the possibility that, in certain circumstances at least, an expert’s opinion be ordered or a consumer research poll be commissioned for the purpose of clarifying whether a trade mark is distinctive or not, descriptive or not, misleading or not, etc. In this case it must be determined ad hoc what the percentage of consumers relevant for determining whether the sign is capable of being a trade mark must be. A consumer survey or an opinion poll may, for example, be suitable to determine whether the use of a trade mark applied for is likely to cause confusion among the target public of an existing trade mark. The difficulties before this approach are in relation with the fact that by the moment those assessments ought to be made the actual circles of consumers towards whom the goods or services covered by a trade mark will be addressed are not yet known.

In any case where the potential consumer and his expected behaviour on the market are what matters, we should look at the average consumer as an objective concept, built upon the idea of the reasonably well-informed, observant and circumspect consumer of the particular goods or services.

B) Who is the average customer?

Once it has been established that in order to determine the capacity of a mark to fulfil its functions, the perception of the average consumer must be examined, the next issue arises what are this consumer’s relevant characteristics and qualities?

The average consumer is „the reasonably well informed and reasonably observant and circumspect representative of the customers of the goods/services covered by the trade mark“. These characteristics of the average consumer (established in Cases C-210/96 Gut Springenheide and Tusky [1998] ECR 1-4657, paragraph 31; Lloyd, par. 26) relate to his degrees of attention and sophistication. The attention and the sophistication are traditionally perceived as the crucial qualities of the consumer so that he can act adequately on the market. The relevant degree of these qualities in the CTM system is the average degree. The case-law and the practice of the Office have sanctioned certain interdependence between the categories of marketed goods / services and the degrees of attention and sophistication of the consumers. In general, some products attract higher attention and are usually sought by more sophisticated customers than others.

When the target group is defined, the average member of that group is to be taken in consideration when making the assessments which must take into account the „public“ (for example in the context of the likelihood of confusion). Thus, the „bases“ in determination of the relevant consumer are two — the target group to which the goods / services are destined (general public / specialized public) and, within the group itself, the type of purchase in question (everyday / infrequent / risky / of durable products etc.). For example, financial services are targeted at all consumers, but are perceived with higher attention that foodstuffs, which have the same intended purchasers. Accordingly, the „financial services average consumer“ differs from the „food average consumer“ (see IVG, par. 62).

The average consumer should be „extracted“ out of the target group, i.e. the intended (objectively intended, not by the expectations or business plans of the undertaking) purchasers of the goods, respectively recipients of the services; all the actual and potential customers in the relevant sector. Therefore, this group must be defined. How?

It was already suggested above (in the third and the following paragraphs) that in order to be defined as (a part of) the relevant public, the persons of a certain group must meet two „requirements“. they must have (actual or potential) need of the goods or services in question; and they must have the objective ability to acquire them on their own (without any „assistance“). What arguments could be raised in support of such a statement?

The definition of the average consumer, given in the case „Gut Springenheide“, is given in relation with the likelihood that an egg-purchasing consumer be misled by an advertisement slip found inside the egg-pack. The intended use of foodstuffs (mass consumption goods par excellence) is, generally, the everyday use. It follows that the public addressed by a mark, that covers such goods, is the public at large („the broad public“) — it is, virtually, all of us who need those goods and the latter are freely available on the market. The relevant perspective in this case is the one of the average representative of the public at large. In other words, in the Gut Springenheide case the ECJ delivered the definition of the „average average consumer“. He is reasonably well informed (level of sophistication) and reasonably observant and circumspect (level of attention) in his everyday purchases. In the same time, some products are, virtually, aimed at only a sector of the public at large although they are available to the „mass-consumer“ these are, for example, the expensive purchases (cars), or products with high brand loyalty, like tobacco. Basically, they provoke more attentiveness in the same average consumer. However, account cannot be taken of the way the applicant uses a distribution system, of the suggested retail price or of any other circumstances of no consequence to the right conferred by the CTM. This position is held in case T-460/05 (B&O / OHIM), where the Court defines the relevant public as „all average Community consumers“, even though the products concerned are „top-of-the-range“, high-value and are marketed exclusively through a selective distribution system. Arguments are, essentially, that price and marketing method are not the subject of registration and may easily change after the registration. In conclusion, when the goods / services, covered by the trade mark application, are available to the public at large, the relevant average consumer is the Community average consumer. However, in making the concrete assessments, it should be borne in mind that the Community average consumer shows different levels of attention in his various kinds of purchases.

On the other hand, when the designated goods are destined to professional or industrial use, i.e. they are simply not (directly) marketed to consumers, we should look at the „business customer“ who may comprise the relevant public either on an intermediate level (in the production or distribution), or as a final customer (e.g. paints for industry). According to me, these are two different situations:

When the professional is a „final consumer“, he may comprise the relevant public as a whole. In Case T-237/01 (Alcon), par. 42 the CFI stated: „In view of the intended use of the goods covered by the mark in question, the targeted public comprises medical specialists, particularly ophthalmologists and ophthalmic surgeons.“ The goods in question are ‘Ophthalmic pharmaceutical preparations; sterile solutions for ophthalmic surgery’, i.e. products which are needed exclusively by ophthalmologists in their profession. In other words, here the healthcare specialists (professional customers) are the „end consumers“.

Professionals in the field might also constitute the relevant public on an intermediate level. These are cases where the goods or services are (potentially) needed by the „mass end-consumer“ but the latter cannot, however, acquire them without assistance (in the broadest sense of the word). The Swiss company „Alcon Pharmaceuticals“ Ltd. is „involved“ again in the relevant jurisprudence as regards this legal situation. The Court, in case C412/05 P, held that when the products are medical products requiring a doctor’s prescription, the relevant public is composed not only of end users (who need the product), but also of professionals (doctors who prescribe the product and pharmacists who sell it). So, whose perspective is to be taken into account when assessing the likelihood of confusion for the purpose of Article 8 (l) (b) in such cases? The roles of the intermediaries (such as, in the case, medical specialists) and the end-users must be balanced depending on the features of the market concerned. It must also be borne in mind that the endconsumers tend to influence the perception of the professionals in sectors where the latter are traditionally perceived as „masters and commanders“. In the medical field, for example, many pharmaceutical companies create channels for distribution „directly to the consumer“ (e.g. Botox). Thus, they create powerful brands. Of course, the final decision is in the hands of the specialist. but he / she may easily be influenced by the client’s preferences (the so-called „reverse influence“). ⁵There is also a certain tendency in many spheres that consumers „skip“ the professional assistance and prefer the „do-ityourself’ method, which results in lower relevance of the professional perception as regards the trademark system.

So, through the use of the „need + capacity“ test, the following forms of the relevant public were achieved: l) the „mass end-consumer“ who goes to the (super) market to satisfy a need of his in his private activity, with a different level of attention and knowledge depending on the need in question; 2) the „professional final (ultimate) consumer“ who needs a particular product in his business life; 3) the „professional intermediary“ + the „mass endconsumer“: balance of perceptions to be established here.

„Mass end-consumers“

(Average private ultimate consumer customer)

The „Gut Springenheide consumer“ and the „Lloyd consumer“ are representatives of the group of the so called private „ultimate“ consumers or end-consumers. Within the group of private consumers the degrees of sophistication and attention differ in accordance with the various goods / services which can be addressed to the same consumers. However, in my opinion it is not fully correct to talk about „section of the public at large“. The public at large is „solid“ — the average consumer stays the same; it is the levels of attentiveness and sophistication that tend to differ according to the various purchases (see LIVE RICHLY, par. 69, 70).

Degree of sophistication of the private ultimate consumers

The degree of sophistication of the relevant public varies according to the category of the goods and services in question (Lloyd, par. 26). Thus, we have the mass-consumption goods, in purchasing of which the average consumer is deemed to be reasonably well-informed. Yet, some goods and services are available and aimed to the broad public, but their intended use suggests specialized or technical knowledge. They possess features affecting the sophistication and / or attention even where the general public is targeted (e.g., the average consumer of cars will be an informed one, taking all relevant factors into consideration, having made a certain examination of the car market, etc.). Therefore, if specific or technical nature of the product in question is involved, we should look through the eyes of the considerably informed public, of consumers with certain level of education or knowledge in relation to the goods and services concerned. Furthermore, consumers without such knowledge and skills often need to turn to professional retailers for advice. In these cases the latter will also form part of the relevant public. They

Al Ries and Laura Ries, op. cit., pg. 132

will not when they have simply advisory role and „end users“ tend to „cut the middleman“ (see, to that effect: SC 11-05-01 (Vredestein / Ring 65)).

The level of sophistication can be of importance both for the perception of the marks (to help memorize an otherwise non-distinctive sign) and of the particular type of goods or services (a good knowledge of the market situation relating to the goods / services in question tends to reduce likelihood of confusion or deception).

Degree of attention of the private ultimate consumers

The rule here is: the greater the level of attention, the lesser the likelihood of confusion and the bigger the chance that the consumer perceives the mark as a designation of commercial origin. The decisive factor is the importance („the involvement“) of a purchase decision to the consumer. The high degree of attention is usually connected with three types of purchases: expensive (automobiles, technics, computers), infrequent (insurance and financial services, purchases of durable goods or goods for more exceptional use), risky (deposits with high rate of interest, pharmaceutical products). Account should be taken of the role of the professional „middleman“ „classic“ example: medical persons. If the professional intermediary cannot be „skipped“, then it is his mind that is relevant, and therefore the level of attentiveness of the relevant public is deemed to be high. Example: prescription pharmaceuticals. Yet, the fact that intermediaries such as healthcare professionals are liable to influence or even to determine the choice made by the end-users is not, in itself, capable of totally excluding the relevance of the consumer’s mind (see to that effect: C-412/05 (Alcon/OHIM)). And if the role of the professional retailer / intermediary is simply advisory, they are not to be taken into consideration when assessing the attentiveness. Example: the „over-thecounter“ pharmaceuticals — consumers may or may not pay special attention when purchasing such drugs, and thus they may not seek a professional advice.

Business customers

The qualification of the Gut Springenheide average consumer applies mutatis mutandis to the business customers. In their case, to be reasonably well informed and reasonably observant and circumspect will generally mean a higher level of sophistication and attention than that of private consumers. Some goods are targeted both to business customers and the public at large (see, inter alia, R-789/2001-3 TITAN). In these cases the understanding of the mark in both circles is relevant.

The concept of the business customers, developed in the Joint

Recommendations on well-known marks^[3] is generally applied in the CTM system. It is important to note that when the intended use of the marked goods / services is among business and other professional circles, the specific knowledge and expertise relating to those products have to be taken into account when assessing the relevant consumer’s perception of certain qualities of the mark. Thus, there is no likelihood of confusion between two trade marks RELISA and VARELISA, although they are visually and phonetically similar and cover identical goods, because „the consumers these goods are targeted at are highly qualified professionals in the field of clinical assays, who are deemed to know the descriptive meaning of this word“ (ELISA — enzyme linked immunoassay solvent assay).

Also, the degree of attention in business deals is usually higher as they require accountability and their cost and efficiency are often monitored.

Ill. The „Quantitative Approach“ to the Relevant Public:

Degree of recognition of the mark among the public and its relevance

The relevant public is traditionally discussed in literature in the above considered way, i.e. as a mental „extraction“ of a group of persons, to which the marked goods / services are aimed. In this sense, the relevant public equals the average member of target group — a qualitative notion, relating to certain characteristics of consumer’s market habits and behaviour. In that way must be assessed the inherent ability of a sign to fulfil trademark’s functions; that concept is also relevant when determining whether there exists likelihood of confusion between two signs used as an origin markers.

However, certain aspects of trade mark protection require another method of approach towards the relevant public. There are cases in Community trade mark law when public is legally relevant, and not in the expressed above form as the „mind of the average consumer“, but as the „relevant sector of the public“ or the „significant part of the relevant public“ that possesses certain knowledge. These notions are principally different from the notion of the average consumer they are based on quantitative (and not qualitative) considerations regarding the degree of knowledge / recognition of the mark among the public. The accent here is not on the potential result of the use of a sign as a trade mark as regards consumer’s mind, but on the actual results, achieved, mostly, through use of the mark (in the broadest sense of the term „use“). These results comprise the level of knowledge or recognition of the trade mark among the persons, who, in one way or another, consume the goods / services covered.

It should be noted, that the bases for determining the ‘ ‘mind of the average consumer“ and the „degree of recognition“ is actually one and the same — the target group of the marked goods / services: both the „end consumers“ and the „business customers“ (who, as it was stated, may also be end-consumers). It is its aspects with legal effect that differ: on the one hand, the view of the average member of that group, and on the other the proportion of that group, comprising of consumers with certain knowledge / experience.

In what way is the degree of recognition of a mark relevant in the CTM system? Essentially, the high degree of recognition results in the establishment of the so called „enhanced distinctiveness“ of a trade mark (in general trade mark doctrine „strength of the mark“). This enhanced distinctiveness is acquired distinctiveness as opposed to „inherent distinctiveness“, which does not play a decisive role here. The general rule is: the greater the degree of distinctiveness, the larger the scope of protection of trade mark rights (see Sabel, par. 24). Therefore marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (see Canon, par. 18). Hence, as the degree of distinctiveness is in direct ratio to the degree of recognition by the relevant public, the latter is a decisive factor for the extent to which protection is conceded to the trade mark proprietor.

If we present the aforesaid graphically as a „scale of market recognition“, at the lower end of the scale we should place the „weak“ trade marks those that have only a small degree of inherent distinctiveness and have not acquired any through use. Then, there are marks which have acquired „enhanced“ distinctiveness through use, and thus enjoy broader protection than marks with a less distinctive character, for example in the context of the likelihood of confusion the Court has made clear that the strong distinctiveness of the earlier mark is an argument in favour of a finding of likelihood of confusion. Also, a relatively high degree of acquired recognition may grant an otherwise non-registrable mark possibility to be registered under the provision of Article 7 (3) CTMR — on the ground of acquired distinctiveness through use.

At the upper end of the scale are marks that are well-known (Article 8 (2) (c) CTMR) — they are afforded with the abovementioned broader protection against similar / identical marks, and furthermore — they are protected even if not registered. Then, there are marks that have a reputation (Article 8 (5) CTMR), which are protected, under certain conditions, against similar / identical signs the use of which may not, however, result in a likelihood of confusion.

Each step of the scale may be presented as a „knowledge threshold“, the surpassing of which guarantees the mark a broader protection than that of the marks at the lower threshold. Here should be noted, that according to the Office, which relies on the case-law of the Court (in particular the judgments Lloyd and Chiemsee) and on the WIPO Recommendations on the protection of well-known marks, the kind of market recognition required for „strong“ marks in the context of Article 8 ( l) (b) CTMR, for well-known marks within the meaning of Article 6bis PC, and for marks with reputation (Article 8(5) CTMR) is actually one and the same, in that it is principally based on quantitative considerations regarding the degree of market recognition of the mark, „without prejudice of course to the level of threshold required in each case“. Thus, the conclusions made as to the way of assessing reputation in the context of Article 8(5), for example, can be considered valid in determination a well-known mark or a „strong“ earlier mark (having in mind the different level of market recognition sufficient for the legal effect to take place).

For other qualifications — of „genuine use“, for example, the sufficient knowledge among the public is of a different kind: only a minimum experience of the relevant public with the trade mark in question (if that experience is of commercial nature, of course) is needed for genuine use to be admitted.

And so, the public (in the form of an actual number of „consumers“ of a certain product, who are familiar with the mark in question) is a relevant factor in:

Assessing the „strength“ of the earlier mark in the context of appreciation of likelihood of confusion;
Determination of well-known marks (Art. 8 (2) c CTMR);
Determination of marks with reputation (Art. 8 (5) CTMR
Determination of „genuine use“ (Art. 15 CTMR); Determination of a trade mark turned generic in consequence of acts or inactivity of the proprietor (Art. 51 (l ) (b)
Granting registrability to an inherently non-distinctive mark Distinctiveness acquired through use (Art. 7 (3) CTMR).

A) Relevant public in determining „strength“ of a trade mark in the context of likelihood of confusion

It was already revealed above, that the perception of the marks in question in the mind of the average consumer, and particularly his degree of attentiveness and sophistication, play a decisive role in assessing the existence of likelihood of confusion. In this process the public is relevant in another aspect as well — when defining the „strength“ of the earlier mark, i.e. its „enhanced distinctiveness“, in the application of the rule „the stronger the degree of distinctiveness (hence the recognition of the relevant public), the larger will be the scope of protection“.

In assessing whether a trade mark is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see, to that effect, judgment of 4 May 1999 in Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee v Huber and Attenberger [1999] ECR 1-0000, paragraph 49).

In its cornerstone in that matter judgment Chiemsee (par. 51) the Court has pointed out in a not exhaustive list the factors to be considered in respect of the evaluation of the distinctive character of a trade mark. Among those factors we find „the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking“. Thus the Court implied that the strength of the mark must be principally assessed on the basis of quantitative criteria. The Court does not, however, and it cannot possibly settle that proportion in exact figures. It is inappropriate to refer in a systematic way to percentages of recognition which may be revealed in public-opinion surveys this would limit the available evidence essentially to surveys and polls: „It is not possible to state in general terms, for example by referring to given percentages relating to the degree of recognition attained by the mark within the relevant section of the public, when a mark has a strong distinctive character“ (Lloyd, par. 28).

The proportion of the relevant public that suffices for a mark to be considered „strong“ is to be determined in each case in the light of all factors relevant to the circumstances. In the Lloyd case the National Court had asked if „a special distinctive character, and hence an extended material scope of protection of a distinguishing sign, [must] be taken to exist where there is a degree of recognition of 10% in the relevant section of the public? Would that be the case with a degree of recognition of 36%? “ Instead of answering these, in fact unanswerable questions, the Court listed in a non-exhaustive way the criteria for evaluation of distinctiveness acquired through use (by reference to the Chiemsee decision). Thus, it has been made clear, that the level of market recognition, being quantitatively measurable, cannot be a priori determined at a constant percentage, sufficient for admitting a special distinctive character to a mark.

The Pago decision (Case C-301/07 PAGO International GmbH v Tirolmilch registrierte Genossenschaft mbH) did not introduce much clarity to that respect. However, it stated that in order to be considered trade mark with reputation (which is, in fact, a mark with a considerably very high degree of „strength“) „a Community trade mark must be known by a significant part of the public concerned by the products or services covered by that trade mark, in a substantial part of the territory of the European Community, and that, in view of the facts of the main proceedings, the territory of the Member State in question (namely Austria) may be considered to constitute a substantial part of the territory of the Community.“ Thus, the Court sets the standards in assessing the relevant degree of recognition and knowledge of a mark in the CTM system.

B) Well-known marks (Art. 8(2)(c) CTMR) and trade marks with reputation (Article 8 (5) CTMR)

As it was stated above, there is no substantial difference between the kind of market recognition of the trade mark in the contexts of Article 8 (l) (b), Article 8 (2) (c) (respectively Article 6bis PC), and Article 8 (5) CTMR. It is the legal effect that differs. Thus, the well-known marks and the reputed marks are enjoying the broader protection of the „strong“ marks as they are par excellence highly distinctive marks which: a) is of nature to increase the likelihood of confusion that a later mark can cause among the public; b) could grant them registrability under the provision of Article 7 (3) CTMR.

But as they have reached a higher „knowledge threshold“, these marks confer their proprietor with enhanced rights following from the special provisions of Article 8 (2) (c) (which basically extends the CTM system protection to non-registered marks) and of Article 8 (5) (respectively Article 9 (l) (c)), which grants protection against signs the use of which is not likely to cause confusion among the relevant public. The presence of those guarantees for the proprietor of such a mark of high distinctive character is a significant reason for the truly careful qualification of reputation / „well-known-ness“ as a primary condition for the application of the said provisions.

Even though the terms „well-known“ and „reputation“ denote distinct legal concepts, there is a substantial overlap between them, as shown by a comparison on the way well-known marks are defined in the WIPO Recommendations with the way reputation has been described by the Court in General Motors. Moreover, and more significant to us in the context of the viewed topic, is that the knowledge thresholds required for each case are expressed in quite similar terms („known or well-known in the relevant sector of the public“ for well-known marks, as against „known by a significant part of the relevant public“ for marks with reputation). That is why, in my opinion, it is appropriate to examine together these „thresholds“ which, in most cases, will coincide. An argument in that direction is also the fact that the TRIPS agreement, which contains provisions on well-known marks, which supplement the protection required by Article 6bis PC, extends that protection of registered well-known marks to goods or services which are not similar to those in respect of which the trade mark has been registered, provided that its use would indicate a connection between those goods or services and the owner of the registered trade mark, and the interests of the owner are likely to be damaged by such use (Article 16 (3) TRIPS). Thus, the legal effect of the well-known marks in the meaning of Article 6bis PC is, in fact, equalized to the one that reputed trade marks have. I believe the established case-law also would „agree“ with such an approach. An argument in that direction may be found in Case T-150/04 Mülhens v OHIM — Minoronzoni (TOSCA BLU) [2007] ECR 11-2353, paragraph 60, in which the Court of First Instance ruled that ‘Regulation No 40/94 is consistent, on this point, with Article 16 (3)

TRIPS…’

Bulgarian Law on Trademarks and Geographical Indications also does not set any differences between the conditions for determining whether a mark is well-known and with reputation (Article 50a). In Bulgarian literature on trademarks has been given the opinion that the difference is not in the degree of knowledge / recognition, but in the average consumer’s assessment of the quality and standard of the marked goods and services, i.e. the notion of „trade mark with reputation“ implies certain high-quality guarantee.7

The Paris Convention does not contain provisions which indicate the required knowledge or recognition in the relevant public for a mark to be given a „well-known“ status, while the TRIPS agreement simply points out that „in

Sarakinov, G, „Law on trade marks in the Republic of Bulgaria“, pg. 40

determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public“. Thus, the relevant act regulating this matter is the WIPO Recommendations, according to which it is the „degree of knowledge or recognition of the mark in the relevant sector of the public“ that matters. No standards for quantitative results to be obtained are set, but paragraph 2 of Article 2 defines the notion of „relevant sector of the public“, basically by stating that the required knowledge may exist not in the public at large but in a particular part of it. „The reason for this is that marks are often used in relation to goods or services which are directed to certain sectors of the public such as, for example, customers belonging to a certain group of income, age or sex.“ By way of example, three relevant sectors are described in items (i) to (iii) of Article 2, par. 2: „actual and/or potential consumers of the type of goods and/or services to which the mark applies“ (i.e. basically — the average private ultimate consumer customer in the CTM system, as discussed above); „persons involved in channels of distribution“ of the goods / services concerned, which may alter considerably according to the nature of the products in question; „the business circles, which deal with the goods and / or services“ (importers, wholesalers etc.). The latter two sectors, virtually, comprise the „business customers“, who may constitute the relevant public either as final consumers or on an intermediate level. The „well-known-ness“ of the mark in one relevant sector suffices for that mark to be afforded the protection required by Article 6bis of the Paris Convention. Thus, in each particular case should be determined: a) which are the relevant sectors of the public; b) what is the proportion of the public familiar with the sign as an indication of commercial origin that is sufficient for the responsible body to consider it a well-known mark. The level of recognition itself is to be determined by consumer surveys and opinion polls among the representatives of the relevant sector.

Territorially, the high level of recognition of the mark must exist on the territory for which the extended protection for well-known marks is pleaded. This is not in direct relation with the use of the mark, i.e. a mark may be considered well-known even if it has not been used in the state concerned.

As for the trade marks with reputation within the meaning of Article 8 (5) and 9 (l) (c) CTMR, very similar considerations are to be made when determining the knowledge threshold required, i.e. generally speaking, reputation must be assessed on the basis of quantitative criteria (General Motors, par. 22, 23). In that decision the Court defined the relevant condition as „a sufficient degree of knowledge“, which is reached when the mark is known by a significant part of the public, thus taking a position against the use of fixed criteria as to a defined percentage of the degree of awareness.

In defining the kind of public among which the knowledge threshold must be reached, the Court stated that this is „the public that is concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large, or a more specialized public, for example traders in a specific sector“. These considerations are basically the same as those made by the Court when assessing the relevant public in the context of likelihood of confusion, descriptiveness of the mark applied for, etc. That is to say, the „need + capacity“ test is appropriate again.

When the relevant public is „dividable“ into different sectors, i.e. when the product in question concerns various purchaser groups (e.g. multipurpose goods), the position of the Court does not seem to differ from the approach taken in the WIPO Recommendations as regards well-known marks: generally, the reputation within one single group suffices.

The question about the territory, in which the relevant public is „located“, is pivotal in the recent Pago decision, even though it had already been settled that it is sufficient for a national trade mark to be pronounced reputed if reputation exists in a substantial part of the Member State rather than in its entire territory (General Motors, par. 28-29). However, it was not clear before the judgment in Pago case whether the territory of one Member State or a substantial part thereof may be considered as a substantial part of the Community for the purposes of Article 9 (l) (c). Now it seems that the answer is given and it is in the positive, as the Court held that a mark with reputation in only one Member State (namely Austria) may use the protection afforded by Article 9 (l) (c). That position, naturally, raised lots of questions, mainly around the effect which it may have in relation to smaller markets and the differences that exist between Member States economic, demographic, administrative etc. Suggestions can be heard such as „one may use this decision to concentrate all the resources (lots of ads, lots of consumer surveys and so forth) one has in one single country …to obtain a declaration by a national court of renown in that country and then use it as a hammer to nail all other countries.“ ^[4]So far 85 trade marks have obtained such a declaration in Bulgaria. And one should have in mind, that there is a common procedure and a common declaration for the receiving of both „well-known“ and „reputation“ status in the Bulgarian administrative system.

Now, is the territory and population of Austria the „test“ for the relevant market that comprises „a substantial part of the territory of the Community“? Time will tell what the proper test really should be. And it seems it is the ECJ who has the ball in possession once again…

C) Relevant public in the context of establishing genuine use (Art.

15; Art. 51 (1) (a) CTMR)

In order to preserve the rights conferred by a CTM registration, the proprietor of a mark should, within a period of five years following registration, put the C TM to genuine use in the Community in connection with the goods or services in respect of which it is registered. Genuine use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (ECJ 11-03-03 C-40/01

Ansul). It instantly follows from that statement, that realizing of genuine use requires such acts with the sign in question which had allowed at least a part of the relevant public to establish a connection between the marked goods / services and the undertaking of origin, It should be noted that the Courts have accepted rather limited evidence of use as adequate in this context (see Case C259/02 La Mer Technology, Inc. v Laboratoires Goemar SA (Laboratoire de la mer) [2004] ECR I-1159). In the same case the ECJ held that „use of the mark may in some cases be sufficient to establish genuine use within the meaning of the Directive, even if that use is not quantitatively significant. Even minimal use (or use by a single importer) can therefore be sufficient to qualify as genuine, on the condition that it is deemed to be justified in the economic sector concerned, for the purpose of preserving or creating market share for the goods or services protected by the mark“. It is obvious that the threshold for acceptance of genuine use is not high — it suffices that the use of the mark serves a real commercial purpose. Thus even minimal use of the trade mark can be sufficient to establish genuine use (La Mer Technology, paragraph 27). It goes without saying that commercial results may be achieved not only among end consumers, but also among distributors and intermediaries.

Genuine use may be found also when the mark has been used in only one part of the Community, such as in a single Member State or in a part thereof. It must, however, be underlined that it is the European requirements or standards which must be complied with and not the national standards. It may be that European quantity standards could be higher than the respective national criteria in some cases.

Relevant public in the context ofArticle 51 (1) (b) CTMR – Trade mark turned generic in consequence of acts or inactivity of the proprietor

As a condition for application of this provision the mark must have become the common name for the good or service not just among some people, but among the large majority of the relevant public including those involved in the trade of the goods or services in question. The relevant sector(s) of the public in this context is (are) determined by the ECJ in a reference for a preliminary ruling in Case C-371/02 (BOSTONGURKA). In the proceedings before the Swedish District Court the applicant „Björnekulla“ sought revocation of the „Bostongurka“ trade mark, as it was claimed to have had turned into a generic name for chopped pickled gherkins. In support of its application, it relied basically on two market research surveys of consumers, while the proprietor of the mark — the company Procordia contested the application, citing a market research survey of leading operators in the grocery, mass catering and food stall sectors. In short, the Court was presented with a case in which the sector of mass consumers perceived the term as a generic name, while the distribution circles and intermediaries had preserved their knowledge of the word as a commercial origin marker. The Swedish Court of Appeal considered that it was not clear from either the wording of Article 25 of the Swedish Law on Trade Marks or of that of Article 12 (2) (a) of the TMD which classes of persons are relevant in determining whether a trade mark has lost its distinctive character in cases where intermediaries participate in the distribution to the consumer or end user of the product: all consumers and / or all those in the trade who deal with the product commercially. In its reference the ECJ has stated: „In general, the perception of consumers or end users will play a decisive role. The whole aim of the commercialization process is the purchase of the product by those persons and the role of the intermediary consists as much in detecting and anticipating the demand for that product as in increasing or directing it… However, depending on the features of the product market concerned, the influence of intermediaries on decisions to purchase, and thus their perception of the trade mark, must also be taken into consideration.“

Relevant public in the context ofArticle 7 (3) CTMR — acquired distinctiveness through use

Article 7 (3) CTMR provides a possibility for an otherwise nonregistrable sign to be registered as a CTM on ground that it has become distinctive for the covered goods / services in consequence of the use which has been made of it. It is a settled case-law that a trade mark is distinctive in this sense if it is recognized by a sufficiently large part of the relevant public as a mark of one single trader (see Case T-399/02 Eurocermex v OHIM (Shape ofa beer bottle) [2004] ECR 11-1391, paragraph 42).

The problem of the acquired distinctiveness is the problem of the „sufficiently large part of the relevant public“. As evident, there are two questions here that need indispensable answers — which is the „relevant public“ in this context, and what comprises a „sufficiently large part of it“?

Relevant is, again, the public to which the mark is addressed — the public concerned by the products or services covered by the trade mark. The starting point for these considerations is the list of goods and services in the application as stated above, they are addressed either to the public at large, or to a more specialized public. In Case R 805/2009-1 (ILVA SARONNO – 3D mark „shape of bottle containing alcoholic beverages“) The First Board of Appeal defines: „The public against whom the registrability of the mark must be assessed is therefore composed of average buyers of wines, spirits and liqueurs in general in the Union.“ Later, in discussing whether there exists acquired distinctiveness of the 3D sign in question, the Board of Appeal held that „the question that must be asked is whether a substantial proportion of consumers in the Union as a whole has been exposed to the mark — i.e. a naked bottle as such — and has, as a result of that exposure, come to recognize the bottle as a sign that the products in which they appear emanate from a specific commercial source. „

This approach in the application of Article 7 (3) clearly sets the difference between the assessment of the inherent distinctiveness and the acquired one. The first is to be perceived through the eyes of the average consumer (par. 16 of the abovementioned decision of the Board); the second — by reference to the actual part of consumers in the Union (or the relevant territorial part of it) who recognize a sign as an indication of the product’s origin.

The circumstances in which the requirement related to the acquisition of distinctive character through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages (see, by analogy, Chiemsee, paragraph 52, and Philips, paragraphs 61 and 62). Rather, the examiner must establish whether it is proved that a relevant part of the public addressed is aware of the mark in the sense mentioned before. This is a question of fact and it is to be proved with opinion polls, surveys, statements from the trade and consumer organizations and other evidence of the degree of knowledge of the mark among consumers and professionals concerned.

Conclusion

And so, the most significant questions about the relevant public in the C TM system may be synthesized to:

1 ) In relation to whom must a trade mark be able to fulfil its functions required by law?

2) Among whom must a trade mark be known / recognized in order to be considered „strong“ / well-known / reputed?

According to me, there is a common answer to both these questions: In relation and among the persons who are concerned with the marked goods or services. This answer itself poses another question: Who is deemed to be „concerned“? In my opinion, these are the persons who need the products in question and who are able to acquire them in the course of their natural market behavior and without further assistance. The notions of necessity and ability to acquire should be interpreted in a broad manner. One may need a product either as a final consumer or in his business; also account should be taken of the potential need, not only of the actual customers. An obstacle before the acquisition may be either of legal character (e.g. goods that cannot be acquired without permission) or of factual character (specific goods in the purchase of which the mass consumer necessarily or normally seeks professional advice). When „on the way to the end-consumer“ there is an intermediary the question is whether the latter constitutes part of the relevant public. In the light of „the whole commercialization process“ the Court has stated that the perception of consumers or end users should play a decisive role, but the influence of intermediaries on decisions to purchase, and thus their perception of the trade mark, must also be taken into consideration.

Once the law-applier has determined the circle of relevant persons in the given case the further considerations that should be made depend on the legal effect sought. If in question is the inherent ability of a sign to constitute a trade mark account should be taken of the average consumer of the target group and buthis ability to perceive it as a marker of commercial origin. If it must be determined whether the trade mark possesses enhanced distinctiveness (i.e. whether it is „strong“, well-known or famous) the significant considerations are of quantitative character: what is the actual part of the relevant public that comprises persons who recognize a trade mark as the sign of a certain undertaking and its goods / services, and furthermore, links it with a highquality guarantee.

[1] According to the Office „the broader term average „customers“ appears to be better suited to include those in the production and distribution chain“ as well as the „ultimate“ consumer — The Manual concerning Opposition — Part 2 Chapter 2A

[2] The Manual concerning Opposition, Part 2, Chapter 21), pg. 9

[3] Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks adopted by the

Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (W IPO) at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States of W IPO

[4] http://ice-ip.blogspot.com/2()09/lO/pago-ecj-gave-birth-to-mouse.html

The Concept of Relevant Public and its Application in the EUTM System – Vasil Dundov

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