Unitary character of EU trademark in case of claim for prohibition

indexThe European court ruled in case C‑223/15 Combit Software GmbH  v  Commit Business Solutions Ltd, which concerns the following:

 combit Software, a company governed by German law, is the proprietor of the German and EU word marks, combit, for goods and services in the computer industry. The company is engaged in, amongst other things, the development and marketing of software.

Commit Business Solutions, a company governed by Israeli law, sells software bearing the word sign ‘Commit’ in a number of countries through its website http://www.commitcrm.com. At the time of the facts in issue in the main proceedings, a German-language version of the company’s offers for sale was available and its software could be ordered for delivery to Germany.

As the proprietor of the combit trade marks, combit Software brought proceedings, pursuant to Article 97(2) of Regulation No 207/2009, against Commit Business Solutions before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany). Principally, it sought, on the basis of its EU trade mark, an order that Commit Business Solutions refrain from using, in the European Union, the word sign ‘Commit’ for the software it was marketing. 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.

The Landgericht Düsseldorf (Regional Court, Düsseldorf) dismissed combit Software’s principal claim but upheld its alternative claim.

Taking the view that the Landgericht Düsseldorf (Regional Court, Düsseldorf) should have ordered Commit Business Solutions to refrain from using the word sign ‘Commit’ throughout the European Union, combit Software brought an appeal before the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany).

That court considers that Commit Business Solutions’ use of the word sign ‘Commit’ gives rise, on the part of the average German-speaking consumer, to a likelihood of confusion with the trade mark combit.

It takes the view, however, that there is no likelihood of confusion on the part of the average English-speaking consumer. In its view, the latter can readily understand the conceptual difference between, on the one hand, the English verb ‘to commit’ and, on the other, the word ‘combit’, as ‘combit’ is made up of the letters ‘com’ for computer and ‘bit’ for ‘binary digit’. It considers that the phonetic similarity between ‘Commit’ and ‘combit’ is, from the perspective of the aforementioned English-speaking consumer, cancelled out by that conceptual difference.

The referring court concludes that there is a likelihood of confusion in the German-speaking Member States and that there is no such likelihood in the English-speaking Member States.

It is uncertain about the way in which the principle, laid down in Article 1(2) of Regulation No 207/2009, of the unitary character of the EU trade mark should be applied in such a situation, in particular so far as concerns the assessment of the likelihood of confusion and the prohibition order referred to in Article 102(1) of that regulation.

In those circumstances, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘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?’

The Court’s decision:

Article 1(2), Article 9(1)(b) and Article 102(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark must be interpreted as meaning 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.

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