combit Software (Judgment) [2016] EUECJ C-223/15 (22 September 2016)

combit Software (Judgment) [2016] EUECJ C-223/15 (22 September 2016)

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 but not in another, it 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, except for the part in respect of which there has been found to be no likelihood of confusion.

Citation
[2016] EUECJ C-223/15
Parties
Applicant: combit Software GmbH; Respondent: Commit Business Solutions Ltd
Jurisdiction
European Union
Judgment Date
22 September 2016
Procedural Posture
Preliminary Ruling / Reference From National Appellate Court (oberlandesgericht Düsseldorf) to Court of Justice of the European Union
Outcome
Reference answered; guidance provided to national court on interpretation of Regulation No 207/2009.
Legal Topics
EU Trade Mark Infringement, Likelihood of Confusion, Territorial Scope of Injunctions, Unitary Character of EU Trade Marks
Intellectual Property European Union Law EU Trade Mark Infringement Likelihood of Confusion Territorial Scope of Injunctions Unitary Character of EU Trade Marks

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Parties

combit Software GmbH

Applicant

Commit Business Solutions Ltd

Respondent

Procedural Posture

Preliminary Ruling / Reference From National Appellate Court (oberlandesgericht Düsseldorf) to Court of Justice of the European Union

Legal Issues

  1. 1 Whether an EU trade mark is infringed across the EU if likelihood of confusion exists only in part of the EU
  2. 2 How the unitary character of the EU trade mark affects the territorial scope of prohibition orders

Ratio Decidendi

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 but not in another, it 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, except for the part in respect of which there has been found to be no likelihood of confusion.

Court Disposition

Reference answered; guidance provided to national court on interpretation of Regulation No 207/2009.

Orders

  • An EU trade mark court must issue an order prohibiting the use of the infringing sign for the entire EU, except for the part where no likelihood of confusion exists.