The matter at hand

Ornua, the owner of several EU trade marks containing the word element KERRYGOLD, brought an infringement action before the Commercial Court in Alicante, Spain, against the Spanish company Tindale & Stanton, seeking a declaration that the import and distribution of margarines under the sign KERRYMAID in Spain constituted an infringement of the KERRYGOLD marks under Articles 9(1)(b) and (c) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark. The margarines in question were manufactured by Kerry Group, the owner of the national mark KERRYMAID in both Ireland and the United Kingdom, where the marks KERRYMAID and KERRYGOLD coexisted peacefully, apparently because the only common word element ‘kerry’ refers to an Irish county known for its cattle breeding. As a result, the use of the mark KERRYMAID did not constitute an infringement in  Ireland and the United Kingdom.

The Spanish court dismissed the infringement action, considering that in view of the unitary character of the EU trade mark, the peaceful co-existence between the marks in Ireland and the United Kingdom lead to the conclusion that there could be no infringement in other parts of the EU either.

Ornua appealed the decision before the Audiencia Provincial de Alicante (Provincial Court of Alicante), which referred several questions to the ECJ, asking, in essence, whether the peaceful coexistence between the marks in Ireland and the United Kingdom should, in view of the unitary character of the EU trade mark, necessarily lead to the conclusion that there is no infringement in the other Member States either.

The judgment of the ECJ

With reference to its decisions in Combit (C-223/15) and DHL Express France (C-235/09), the ECJ recalls that it has already held “that the examination of the likelihood of confusion in part of the European Union must be based on a global assessment of all the relevant factors in the case concerned (…), which may lead, in particular for linguistic reasons, to different conclusions for one part of the European Union and for another” (paragraph 36). Consequently, “the fact that, in part of the European Union, an EU trade mark and a national mark peacefully coexist, does not allow the conclusion that in another part of the European Union, where peaceful coexistence between that EU trade mark and the sign identical to that national mark is absent, there is no likelihood of confusion between that EU trade mark and that sign” (paragraph 38).

Something similar applies under Article 9(1)(c). After all, where the peaceful coexistence of two marks in one part of the EU constitutes due cause under that provision, due cause does not exist in parts of the EU where such peaceful coexistence is absent. Therefore, “the fact that, in part of the European Union, an EU trade mark with a reputation and a sign peacefully coexist, does not allow the conclusion that in another part of the European Union, where that peaceful coexistence is absent, there is due cause legitimising the use of that sign” (paragraph 60).

This also means that elements present in one part of the EU, in this case Ireland and the UK, cannot automatically be taken into account for assessing whether the proprietor of an EU trade mark is entitled to prohibit the use of a sign in another part of the EU, unless “there is no significant difference between the market conditions or the sociocultural circumstances” which may be observed in the respective parts of the EU (paragraph 46).

On this basis, the ECJ rules that “elements which, according to the European Union trade marks court hearing an infringement action, are relevant for assessing whether the proprietor of an EU trade mark is entitled to prohibit the use of a sign in part of the European Union not covered by that action, may be taken into account by that court to assess whether that proprietor is entitled to prohibit the use of that sign in the part of the European Union which is the subject of the infringement action, provided that the market conditions and the sociocultural circumstances are not significantly different in one of those parts of the European Union and in the other” (paragraph 47).