EUROPEAN UNION: CJEU Rules on Possibility to Limit the Territorial Scope of EU-Wide Injunctions

In a judgment issued on September 22, 2016, the Court of Justice of the European Union (CJEU) ruled that, despite the unitary character of EU trademark (EUTM) protection, it is possible to limit the territorial scope of an injunction for the infringement of an EUTM. C-223/15, EU:C:2016:719.

The plaintiff, combit Software, is the proprietor of German and EU word mark “combit” for goods and services in the computer industry. Commit Business Solutions, the defendant, sells software bearing the word sign COMMIT in a number of EU Member States through its website. The trademark proprietor brought an infringement action before the German courts and, on the basis of its EUTM, sought an order to prohibit the defendant from using the word sign COMMIT for its software marketed in the EU.

The District Court of Düsseldorf, Germany, dismissed the claim for a Europe-wide injunction and combit Software appealed asking for an injunction covering the entire EU territory. The Higher Regional Court of Düsseldorf considered that the use of COMMIT gave rise to a likelihood of confusion with the trademark “combit” on the part of the German public. However, the court found no likelihood of confusion with respect to the English-speaking public, as the latter would easily perceive the conceptual difference between the verb “to commit” and the word “combit,” notwithstanding the phonetic similarity. In this context, the Higher Court made a reference for a preliminary ruling to the CJEU asking whether, if there is a likelihood of confusion only in some Member States, the EU trademark has been infringed across the EU, or the Member States must be differentiated individually.

The CJEU importantly ruled that territorially limited injunctions are possible under EU law despite the unitary character of the EUTM protection. According to the ruling, the uniform protection means that a likelihood of confusion in a part of the EU will suffice to conclude that the exclusive right conferred by the EUTM has been infringed. Consequently, the order prohibiting the use of the infringing sign, as a rule, should extend to the whole of that area. However, following the principles set out in DHL Express France C-235/09, EU:C:2011:238, where likelihood of confusion was found not to exist in one part of the EU, the courts should exclude this territory from the scope of the injunction. The CJEU also ruled that the burden to identify such territories in principle lies with the defendant and that to avoid uncertainty national courts should specify such parts with precision.

By Dimitar Batakliev, Associate at PETOŠEVIĆ Bulgaria

This article first appeared here in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).