Friday 30 September 2016

Infringement of an EU trademark... but not in the whole of the EU

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.


Author: Carlos Morán

Visit our website: http://www.elzaburu.es/en

25 comments:

  1. Oh, so nice! Guys! If you need some help or any question about essay writing or homework, you can ask this guys for help! Just write to them https://www.personalstatementwriter.org/ write my paper and be ready for wins! Good luck!

    ReplyDelete
  2. Check out our range of equestrian supplies including horse rugs, riding boots and everything else for the horse and rider.. online equine

    ReplyDelete
  3. This is the first time that I visit here. I found so many exciting matters in this particular blog, One thing I would like to request you that pls keep posting such type of informative blog.
    Site: Men leather jackets in UK

    ReplyDelete
  4. College life is too unique and difficult because it is essential to every student's career, so I contacted an analytical essay help provider to ensure I wouldn't run into any problems. Making your project will be simple with the information you provided.

    ReplyDelete
  5. I have to take it out the EU trademark, and I have got many students who can make the real trademark or sologan for you. the best way to deal with you have to offering Mphil thesis writing help with the best price and with MLA writing style.

    ReplyDelete
  6. School life is too extraordinary and troublesome on the grounds that it is crucial for each understudy's profession, so I reached a nursing capstone project proposal supplier with guaranteeing I wouldn't run into any issues. Making your venture will be basic with the data you gave.

    ReplyDelete
  7. The judgment in case C-223/15 highlights the importance of taking into account the perception of the relevant consumer group when assessing the likelihood of confusion in trademark infringement cases. CEMENT TREATED BASE services in austins are crucial for ensuring the stability and durability of roads, parking lots, and other paved surfaces

    ReplyDelete
  8. As a company operating in the EU market, legrand products abu dhabishould be aware of the potential risks of using trademarks or signs that may cause confusion with existing registered marks. Conducting thorough trademark searches and seeking legal advice can help mitigate these risks and ensure compliance with EU trademark laws

    ReplyDelete
  9. It underscores the need for a nuanced approach to trademark infringement cases that takes into account the perspectives of different consumer groups. Meanwhile, in Ottawa, auto owners can trust Ottawa Auto Detailing to provide quality car detailing services that help protect their investment and keep their vehicle looking great.

    ReplyDelete
  10. The request for guidance from the CJEU highlights the complexity of assessing likelihood of confusion in trademark cases involving different consumer groups. It also raises questions about the territorial scope of EU trademark infringement. On a separate note, activated carbon supplier Houston provides a wide range of high-quality activated carbon products for various industrial and environmental applications.

    ReplyDelete
  11. This is particularly relevant for companies engaged in e-commerce, which operate across the EU and need to ensure compliance with trademark law. E-commerce web development dubai can benefit from this guidance to ensure the protection of trademarks in their online operations.

    ReplyDelete
  12. Kettlebell exercises Dubai involve using a cast iron weight with a handle to perform various strength and conditioning movements. These exercises are designed to improve overall fitness and build strength, endurance, and flexibility.

    ReplyDelete
  13. EU trademark and its protection against confusingly similar signs. It is crucial for businesses to understand and protect their intellectual property rights in order to maintain a competitive advantage. Additionally, companies can consider using products such as kdk fans electra and Electra for their cooling needs.

    ReplyDelete
  14. ELZABURU shines in the realm of Intellectual Property. Just as our Breakfast catering services in Monahans TexasTexas provide a satisfying start to the day, ELZABURU's expertise ensures a strong foundation for protecting innovative ideas and creations.

    ReplyDelete
  15. Infringement of an EU trademark, even if limited to a specific region, raises important legal concerns. Just as vigilance is vital in protecting intellectual property, finding theBest Barber Shop in Canadarequires a discerning eye for quality in a localized context. Both situations emphasize the significance of upholding standards within defined boundaries.

    ReplyDelete
  16. Dealing with the infringement of an EU trademark can be a complex legal matter, especially when it's not occurring throughout the entire EU region. Legal expertise is crucial to navigate such situations. Keep it in top shape with a visit to an Ottawa Car Wash, ensuring it looks impeccable wherever you go

    ReplyDelete
  17. Navigating the complexities of EU trademark infringement requires legal finesse. Just like a finely crafted blend, legal strategies need to be nuanced. Trust the experts, much like choosing thecoffee roasters dubai – precision matters.

    ReplyDelete
  18. Infringement of an EU trademark within a specific region requires a nuanced analysis to determine its scope and extent. Legal proceedings focus on the jurisdiction, requiring precise evidence and expert representation. Addressing this issue requires navigating EU trademark law and national laws, necessitating a comprehensive legal strategy to protect trademark owners' rights effectively. Divorcio Barato Nueva York

    ReplyDelete
  19. The infringement of an EU trademark, even when not spanning the entire EU, raises complex legal considerations. Just as legal intricacies are examined, it's essential to look into tank cleaning houston ensuring compliance and safety in specific regions. It's about addressing nuanced issues while maintaining high standards of cleanliness and integrity, both in the legal realm and physical environments.

    ReplyDelete
  20. Addressing an infringement of an EU trademark, even in specific regions, is crucial for protecting intellectual property. In this legal pursuit, just as attention to detail matters, consider the convenience of curbside car wash services to maintain the pristine appearance of your vehicle. Much like protecting trademarks, safeguarding your car's exterior reflects a commitment to quality and excellence

    ReplyDelete
  21. That's a great one love read more.. very informative!!!!!!
    Conducir Sin Licencia Nueva Jersey

    ReplyDelete
  22. The CJEU's judgment in the combit Software case provides clarity on EU trademark infringement, emphasizing a unified approach. Driving Without A License New Jersey The court's stance, that infringement occurs if confusion exists in any part of the EU, ensures consistent protection across member states. This decision aligns with the established principle in opposition cases, reinforcing the unitary character of European Union trademarks. It establishes a robust framework for safeguarding brand rights throughout the EU.
    New Jersey District Court Protective Order

    ReplyDelete
  23. The nuances of an infringement of an EU trademark, limited to specific regions, highlight the complexities in intellectual property disputes. Just as legal matters require precision, ensure the boundaries of your commercial space with reliable fencing. commercial fencing edmonton trust the expertise of commercial fencing services to delineate and protect your business boundaries, providing a robust defense for your physical assets.

    ReplyDelete
  24. The infringement of an EU trademark, while not widespread across the entire EU, underscores the importance of vigilant intellectual property protection. As legal matters unfold, it's a reminder to address issues at their source. Speaking of localized solutions, just like legal concerns need attention, your vehicle deserves focused care too. Consider Mobile Car Wash services in Ottawa for a convenient and targeted approach to keep your car pristine, even in the midst of broader challenges.

    ReplyDelete