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28-10-2016 » European trademarks and prohibition of use: what limits to the limitations?

“..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”

In its judgment of 22 September 2016 (Case C 223/15), the European Court of Justice (ECJ) clearly stated that the exclusive rights attached to a European trademark extend to all Member States, though it also specifies that measures that prohibit acts of infringement do not automatically apply in all those States.

It should be recalled that the ECJ had already decided in Case C-235/09 DHL / Chronopost of 12 April 2011 that:

  • The territorial scope of these injunctions could be limited by (i) the applicant itself since they determine the scope of the action undertaken or (ii) the defendant if he demonstrates that there is no proven or possible harm to the functions of the trademark within a part of the territory.
  • The prohibition applies (i) in the State of the court where the prohibition has been declared, (ii) to expressly designated Member States if a territorial limit is specified, or (iii) the entire EU territory if the Court has not specified otherwise.

In its judgment of 22 September 2016, the Court adopted the same reasoning in relation to a question referred to it by the Court of Appeal of Dusseldorf, about a use prohibition on German territory, granted on the basis of an earlier German mark "Combit” against the trademark "Commit", which likewise had been registered for software. The prohibition of use, this time requested on the basis of an earlier identical European trademark, was not granted for the whole territory of the European Union.

The German court had considered that there was no risk of confusion in the mind of the average English-speaking consumer who could "easily understand the conceptual difference between the verb ‘to commit’, and the term ‘combit’ composed of the letters ‘com’ to mean ‘computer’ and the letters ‘bit’ for ‘binary digit’ “. In the opinion of the court, this conceptual difference neutralized the risk of confusion caused by the phonetic similarity between the signs at issue. The judge concluded that there was a likelihood of confusion in German-speaking Member States but not in the English speaking Member States.

The ECJ has now confirmed the possibility of limiting the territorial scope of a prohibition of use in this way. However, it was careful to specify that when a Court concludes that there is not a likelihood of confusion in part of the territory of the European Union, and therefore no corresponding prohibition for this territory, it must unambiguously specify which part of the territory is concerned: "when, as in this case, this court intends to exclude the application of a ban in certain language areas of the EU, such as those described by the term ‘English-speaking’, it is obliged to thoroughly specify what areas are designated by this term." It should be recalled that in this case the products concerned were software products, for which it can be assumed that the relevant consumer, in all or at least many of the EU countries, has a basic knowledge of English.

Thus, a use prohibition on the basis of a European trademark may be territorially limited without its unitary character being considered to be affected, since the owner retains its right to prohibit any use which is detrimental to its rights under its own trademark. However, defining this limited exclusion area in a justifiable manner is likely to prove difficult in a number of cases.

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