combit Software GmbH v Commit Business Solutions Ltd.
Date: 2016-09-22
25


When, as here, the EU trade mark court finds, in the exercise of that jurisdiction, that the use of a sign creates, in one part of the European Union, a likelihood of confusion with an EU trade mark, whilst, in another part of the Union, that same use does not give rise to such a likelihood of confusion, that court cannot conclude that there is no infringement of the exclusive right conferred by that trade mark. Rather, it must find that the function of the trade mark as an indication of origin is adversely affected and that, as a consequence, there is an infringement of the exclusive right conferred by the mark.
26


In that context, 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, 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 (see, to that effect, judgment of 18 September 2008, Armacell v OHIM, C‑514/06 P, not published, EU:C:2008:511, paragraphs 56 and 57, and order of 16 September 2010, Dominio de la Vega v OHIM, C‑459/09 P, not published, EU:C:2010:533, paragraphs 30 and 31).
27


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 (see, as regards Article 5(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 24), the wording of which corresponds to that of Article 9(1)(b) of Regulation No 207/2009, the judgment of 3 March 2016, Daimler, C‑179/15, EU:C:2016:134, paragraph 27 and the case-law cited). 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.
29


Under Article 102(1) of Regulation No 207/2009, the court which has made such a finding must issue an order prohibiting the defendant from proceeding with the acts which infringe or would infringe the EU trade mark. Although it is true that, under that provision, the existence of ‘special reasons’ may justify not issuing such an order, the Court of Justice has already held that that exception must be interpreted strictly and covers only certain exceptional situations, which are not in issue in the case in the main proceedings (see, to that effect, judgments of 14 December 2006, Nokia, C‑316/05, EU:C:2006:789, paragraph 30, and 22 June 2016, Nikolajeva, C‑280/15, EU:C:2016:467, paragraph 33).
30


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 (see, with regard to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), repealed and replaced by Regulation No 207/2009, the judgment of 12 April 2011, DHL Express France, C‑235/09, EU:C:2011:238, paragraphs 39 to 44).
31


However, as follows from paragraph 48 of the judgment of 12 April 2011, DHL Express France (C‑235/09, EU:C:2011:238), in a situation in which — as in the case in the main proceedings — 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.
32


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. As the Advocate General has observed in points 25 to 27 of his Opinion, 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 (see, to that effect, judgment of 12 April 2011, DHL Express France, C‑235/09, EU:C:2011:238, paragraphs 46 and 47).
33


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 (judgment of 25 June 2015, Loutfi Management Propriété intellectuelle, C‑147/14, EU:C:2015:420, paragraph 23 and the case-law cited).
36


In view of all the foregoing, the answer to the question referred is that 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.