Reconciliation of Trade Marks’ Function with Prohibition Orders in Infringement Cases: the Restricted Uniform Protection of EUTMs in “combit Software”
On 22 September 2016 the CJEU issued its judgement in case C-223/15, “combit Software”, which concerned the reference for a preliminary ruling on the interpretation of Article 1(2), Article 9(1)(b) and Article 102(1) of Regulation 207/2009 (as it stood prior to the amendment introduced by Regulation (EU) 2015/2024).
The reference was made by the High Regional Court of Düsseldorf in the course of the proceeding involving the German company combit Software GmbH (‘combit Software’) and the Israeli company Commit Business Solutions Ltd (‘Commit’).
At first instance, combit Software brought before the Regional Court of Düsseldorf a trade mark infringement action against the use of the Israeli company’s word sign ‘Commit’ in connection with software marketed, among other countries, in Germany (at the time of writing the Commit’s website’s legal terms specify that “All offers and/or options available on the Web page referreing to this page are not directed to customers from Germany”).
This action was based on two claims alternatively relying on combit Software’s EU and national trade marks ‘combit’, with the aim at seeking a prohibition order impeding the use of the sign ‘Commit’ for software respectively in the EU or in Germany.
The Regional Court of Düsseldorf only upheld combit Software’s claim grounded on the infringement of its national mark ‘combit’. The trade mark proprietor then filed an appeal before the High Regional Court of Düsseldorf contending that Commit should instead be refrained from using the sign ‘Commit’ throughout the EU.
In appeal, the High Regional Court of Düsseldorf also found that there was a likelihood of confusion between the mark ‘combit’ and the sing ‘Commit’ only in respect of the German-speaking consumers. On the contrary, when considering the English-speaking consumers’ perception, the conceptual differences between the signs ruled out their phonetic similarities, in that the word ‘combit’ results from the combination of the letters ‘com’ for ‘computer’ and ‘bit’ for ‘binary digit’, which excludes any semantic relationship with the English verb “to commit”.
However, as regards the infringement of the EU trade mark ‘combit’, the High Regional Court of Düsseldorf considered that it needed a clarification on how to apply the principle of the unitary character of EU trade marks contained in Article 1(2) of Regulation 207/2009 in a case, such as the one at stake, where the assessment on the likelihood of confusion and the prohibition order, as respectively provided by Article 9(1)(b) and Article 102(1) of Regulation 207/2009, could apply to only one part of the EU.
The question referred to the CJEU for a preliminary ruling was therefore as follows:
‘In the assessment of the likelihood of confusion of an EU word mark, what is the significance of a situation in which, from the perspective of the average consumer in some Member States, the phonetic similarity of the EU trade mark with another sign claimed to infringe that trade mark is cancelled out by a conceptual difference, whereas from the perspective of the average consumer in other Member States it is not?
(a) In assessing the likelihood of confusion, is the perspective of some Member States, of the other Member States, or that of a fictive EU average consumer decisive?
(b) If there is a likelihood of confusion only in some Member States, has the EU trade mark been infringed across the European Union, or must the Member States be differentiated individually?’
First, the CJEU clarified that the likelihood of confusion in a part of the EU consumers leads to the infringement of the exclusive right conferred by a EU trade mark according to Article 9(1)(b) of Regulation 207/2009, namely the right to prohibit an unauthorized third party from using a sign identical with or confusingly similar to the proprietor’s earlier EU trade mark for goods and services identical with or similar to those covered by such earlier EU trade mark.
However, by citing its previous judgment of 12 April 2011, C-235/09 “DHL Express France”, the CJEU laid down a general rule and the corresponding exception for the application of Article 102(1) of Regulation 207/2009 in regard to the prohibition order that a national Court should issue to stop the defendant from either committing or threatening acts of infringement of an EU trade mark.
In this regard, such prohibition order must be interpreted in the light of the principle of unitary character of EU trade marks but it must still reconciled with the trade mark’s essential function of commercial source identifier. This means that as a general rule where a national Court finds that an EU trade mark infringement has occurred it must issue a prohibition order extending to the entire EU jurisdiction, unless that it clearly identifies a part of the EU where there cannot be a likelihood of confusion justifying the wide extent of the prohibition order.
This may be the case where, as in the dispute at stake, the confronted signs cannot be confused for linguistic reasons in a determined part of the EU, so that on the basis of the evidence provided by the defendant no likelihood of confusion arises between them in such territory.
In this scenario the national Court must precisely determine the part of the EU where the use of the contested sign permits the earlier EU trade mark to fulfil its essential function and must issue the prohibition order for the entire area of the EU except for that territory where it founds there is no likelihood of confusion.
In view of the CJEU’s judgement it is likely that the High Regional Court of Düsseldorf will partially overturn the Regional Court of Düsseldorf’s decision by also establishing the infringement of combit Software’s EU trade mark while prohibiting Commit from using its sign only in Germany and, possibly, in other (non-English-speaking) Member States where confusion may potentially arise.
Related Posts:
- According to the CJEU, The period of 5 years following registration constitutes a grace period for the trademark holder
- European Union Trademark Licenses do not Need to be Registered for Licensees to Pursue Infringers, Says CJEU, as Opposed to the Interpretation of the EU Trademark Court of Alicante
- CJEU Decision in “Genesis”, a good example of the relevance of the autonomous interpretation of the CTM Regulation
- What is the Scope of the “Reasonable Compensation” for a Trademark Infringement Established in Art. 9.3 EUTMR? – CJUE Judgment of 22 June 2016, C-280/15, “Nikolajeva”