The matter at hand

The company Combit Software is the owner of a German trade mark and an EU trade mark for the word mark COMBIT for goods and services in the computer industry. Commit Business Solutions sells software bearing the word sign COMMIT through its website in a number of countries, including Germany. Combit Software sought, on the basis of its EU trade mark, an order that Commit Business Solutions refrain from using, in the EU, the word sign COMMIT. In the alternative, it requested, in reliance on its German trade mark, an order that Commit Business Solutions refrain from using that word sign in Germany. Only Combit Software’s alternative claim was upheld.

In the appeal brought before it, the referring court in Düsseldorf concluded that there is indeed a likelihood of confusion in the German-speaking Member States, but that there is no such likelihood in the English-speaking Member States. As the referring court is uncertain about the way in which the principle of the unitary character of the EU trade mark should be applied in such a situation, it decided to stay the proceedings and ask the ECJ whether, in case an EU trade mark court finds that the use of a sign creates a likelihood of confusion with an EU trade mark in one part of the EU whilst not creating such a likelihood in another part thereof, that court must conclude that there is an infringement and issue an order prohibiting the use throughout the EU.

The judgment of the ECJ

With reference to its DHL Express France judgment (C‑235/09), the ECJ considers that if an EU trade mark court finds that the use of the sign in question does not, in a given part of the EU, create any likelihood of confusion, in particular for linguistic reasons, and therefore cannot, in that part of the EU, adversely affect the trade mark’s function of indicating origin, that court must limit the territorial scope of the prohibition (paragraph 31).

The ECJ continues by pointing out that “where an EU trade mark court concludes (…) that there is no likelihood of confusion in a part of the European Union, legitimate trade arising from the use of the sign in question in that part of the European Union cannot be prohibited” and that “such a prohibition would go beyond the exclusive right conferred by the EU trade mark, as that right merely permits the proprietor of that mark to protect his specific interests as such, that is to say, to ensure that the mark is able to fulfil its functions” (paragraph 32).

According to the ECJ such interpretation does not undermine the unitary character of the EU trade mark, since the right of the proprietor of the trade mark to prohibit all use which adversely affects the functions inherent in that mark is preserved (paragraph 35).

On this basis, the ECJ concludes that “where an EU trade mark court finds that the use of a sign creates a likelihood of confusion with an EU trade mark in one part of the European Union whilst not creating such a likelihood in another part thereof, that court must conclude that there is an infringement of the exclusive right conferred by that trade mark and issue an order prohibiting the use in question 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” (paragraph 36).