Opinion of the Advocate General — ECLI:EU:C:2016:351
Date: 2016-05-25
Language of the case: German
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Reference for a preliminary ruling
Origin: Germany

Summary — Judgment of the Court (Second Chamber), 22 September 2016 1. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Earlier mark consisting in an EU trade mark — Registration refused where there is a relative ground for refusal even though limited to part of the European Union (Council Regulation No 207/2009, Art. 8(1)(b)) 2. EU trade mark — Effects of the EU trade mark — Rights conferred by a trade mark — Right to prohibit the use of a mark — Use of an identical or similar sign covering identical or similar products or services — Likelihood of confusion limited to part of the European Union (Council Regulation No 207/2009, Arts 8(1)(b) and 9(1)(b); European Parliament and Council Directive 2008/95, Art. 5(1)(b)) 3. EU trade mark — Disputes concerning infringement and validity of EU trade marks — Penalties in the case of infringement or threatened infringement — Obligations of the EU trade mark courts — Adoption of an order prohibiting the defendant from proceeding with the acts which infringed or threatened to infringe the EU trade mark — Exception — ‘Special reasons’ for not adopting such an order — Meaning (Council Regulation No 207/2009, Art. 102(1)) 4. EU trade mark — Disputes concerning infringement and validity of EU trade marks — Penalties in the case of infringement or threatened infringement — Obligations of the EU trade mark courts — Adoption of an order prohibiting the defendant from proceeding with the acts which infringed or threatened to infringe the EU trade mark — Likelihood of confusion limited to one part of the European Union (Council Regulation No 207/2009, Arts 1(2), 9(1)(b) and 102(1)) 1. See the text of the decision. (see para. 26) 2. The Court has already held, in a case concerning the right of the proprietor of an EU trade mark to oppose, pursuant to Article 8(1)(b) of Regulation No 207/2009 on the European Union trade mark, registration of a similar EU trade mark which would create a likelihood of confusion, that such an opposition must be upheld where it is established that there is a likelihood of confusion in part of the European Union, a Member State, for example, being capable of constituting such a part. A similar approach is necessary in cases concerning the right of the proprietor of an EU trade mark to prohibit the use of a sign which creates a likelihood of confusion. Article 9(1)(b) of Regulation No 207/2009 protects the proprietor of an EU trade mark against any use which adversely affects that trade mark’s function of indicating origin or is liable to do so. The proprietor is therefore entitled to prohibit such use, even if the latter adversely affects the abovementioned function only in part of the European Union. (see paras 26, 27) 3. See the text of the decision. (see para. 29) 4. In order to guarantee the uniform protection which EU trade marks are afforded throughout the entire area of the European Union, the prohibition on proceeding with acts which infringe or would infringe an EU trade mark must, as a rule, extend to the whole of that area. However, in a situation in which an EU trade mark court finds that the use of the similar sign in question for goods that are identical to those for which the EU trade mark at issue is registered does not, in a given part of the European Union, create any likelihood of confusion, in particular for linguistic reasons, and therefore cannot, in that part of the Union, adversely affect the trade mark’s function of indicating origin, that court must limit the territorial scope of the aforementioned prohibition. Indeed, where an EU trade mark court concludes, on the basis of information which must, as a rule, be submitted to it by the defendant, that there is no likelihood of confusion in a part of the European Union, legitimate trade arising from the use of the sign in question in that part of the European Union cannot be prohibited. Such a prohibition would go beyond the exclusive right conferred by the EU trade mark, as that right merely permits the proprietor of that mark to protect his specific interests as such, that is to say, to ensure that the mark is able to fulfil its functions. A finding that there is no likelihood of confusion in a part of the European Union may, in accordance with the Court’s settled case-law, be based only on an examination of all the relevant factors in the case concerned. The assessment must include a visual, phonetic or conceptual comparison of the signs at issue, bearing in mind, in particular, their distinctive and dominant components. It is also important that the EU trade mark court concerned identifies with precision the part of the European Union in respect of which it finds there to be no actual or potential adverse effect on the functions of the trade mark, so that it is absolutely clear from the order issued under Article 102 of Regulation No 207/2009 on the European Union trade mark which part of the Union is not covered by the prohibition on using the sign in question. Where that court intends to exclude from the prohibition on use certain linguistic areas of the European Union such as those designated by the term ‘English-speaking’, it must state comprehensively which areas it intends that term to cover. An interpretation whereby a prohibition on the use of a sign creating a likelihood of confusion with an EU trade mark applies to the entire area of the European Union, with the exception of the part of that area for which there has been found to be no such likelihood of confusion, does not undermine the unitary character of the EU trade mark referred to in Article 1(2) of Regulation No 207/2009, since the right of the proprietor of the trade mark to prohibit all use which adversely affects the functions inherent in that mark is preserved. Accordingly, Article 1(2), Article 9(1)(b) and Article 102(1) of Regulation No 207/2009 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. (see paras 30-36)