EU Trademark Confusion Dependent on Language

A recent reference to the Court of Justice of the European Union (CJEU) has resulted in the clarification of an interesting point of law concerning injunctions relating to European Union (EU) trade marks.

The starting point is that an EU trademark has been infringed (and so an injunction should be granted across the EU) if there is a likelihood of confusion in any part of the EU. However, the CJEU clarified in the below case that if the likelihood of confusion does not apply to, or can be excluded in respect of, certain parts of the EU then any injunction must not apply to those parts.

The case in point is combit Software Gmbh v Commit Business Solutions Ltd and the judgment can be found here. The Claimant, combit, is the proprietor of trade marks (German and EU marks) for its name in respect of software and, specifically, customer relationship management software (CRM) software. Combit sought an injunction against Commit using the mark COMMIT across the EU and alternatively in Germany only.

Initially, the lower German court held that whilst confusion was likely within Germany, to an English speaking consumer the difference between the marks was more pronounced and so a likelihood did not exist. On appeal, this view was upheld but combit raised the starting point set out above for EU trade mark infringement; a pan-EU injunction should apply if there is confusion in any part of the EU. At this point a reference was made to the CJEU.

The CJEU ruled that whilst the starting point set out above stands true, an injunction must be limited to the parts of a territory in which a likelihood of confusion exists, on the basis that in those parts where there is not a likelihood, the mark remains "able to fulfil its functions" (paragraph 32 of the judgment).

The German court is now left with the task of integrating the CJEU's reasoning into its own judgment. Coming to a clear view to practically implement the line between English speaking consumers and non-English speaking consumers, in terms of territory, may be a difficult task, and possibly one that will turn on evidence, but the principle is clear.

If you have any questions on the above please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdainelslaw.com.