The Court of Justice of the European
Union has recently delivered its judgment in case C-223/15, combit Software (judgment of 22 September 2016, ECLI:EU:C:2016:719)
concerning the interpretation of the unitary character of the European Union
trademark in relation to the scope of infringement actions against confusingly
similar signs.
In the case that prompted the
Oberlandesgericht Düsseldorf to make a reference for a preliminary ruling, that
court considered that a company’s use of the word sign “Commit” for computer
programs gave rise, on the part of the average German-speaking consumer, to a
likelihood of confusion with the EU trademark “combit”. However, in the German court’s view, there was
no such likelihood of confusion on the part of the average English-speaking
consumer, who could easily understand the conceptual difference between the
English verb “to commit” and the term
“combit”, comprised of the letters “com” for computer and “bit” for binary digit.
In those circumstances, the Oberlandesgericht
Düsseldorf asked the CJEU for guidance as to which of those two consumer groups
should be taken into account in order to assess the likelihood of confusion,
and whether the EU trademark should be considered as infringed throughout the
whole of the EU or whether the Member States should be differentiated
individually.
In response to the referring court’s
question, the CJEU indicated that where there is a likelihood of confusion in
one part of the European Union, it must be concluded that the EU trademark has
been infringed, even if that likelihood of confusion does not exist in other
parts of the EU. This solution is in
keeping with the approach followed for oppositions to EU trademark
applications, where the existence of a likelihood of confusion with an earlier
trademark in one part of the European Union will suffice in order for the
application to be refused.
The Court of Justice nevertheless
goes one step beyond the question referred by the German court and analyses the
consequences of the declaration of infringement. Here, the CJEU is supported by the case-law
established in its earlier judgment of 12 April 2011, DHL Express France (C-235/09, ECLI:EU:C:2011:238). In that judgment, the Court of Justice had
ruled that a prohibition on proceeding with acts which infringe or would
infringe an EU trademark must, as a rule, extend to the entire area of the EU. However, it established the exception (paragraph
48 of the judgment) that where the defendant proves that the use of the sign at
issue does not affect, particularly on linguistic grounds, the functions of the
trademark in part of the EU, the EU trademark court must limit the territorial
scope of the prohibition that it issues.
Based on that reasoning,
the Court of Justice has now concluded that in a situation such as the one
raised by the Oberlandesgericht Düsseldorf, the EU trademark court must issue
an order prohibiting use of the infringing sign for the entire area of the
European Union with the exception of the part in respect of which there has
been found to be no likelihood of confusion. In the CJEU’s opinion, this solution, which initially seems to
contradict the principle of the unitary character of the EU trademark, is
imposed by the need for exclusive rights to be exercised only in cases where
the use of a similar sign by a third party adversely affects the functions of
the trademark.
