Ornua Co-operative Limited v Tindale & Stanton Ltd España, SL.
Date: 2017-07-20
28


Accordingly, the Court has already held that the exclusive right conferred by an EU trade mark on its proprietor, under Article 9(1) of Regulation No 207/2009, extends, as a rule, to the entire area of the European Union (see, to that effect, judgment of 12 April 2011, DHL Express France, C‑235/09, EU:C:2011:238, paragraph 39).
29


As regards Article 9(1)(b) of that regulation, it is clear from the settled case-law of the Court that that article 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 (judgment of 22 September 2016, combit Software, C‑223/15, EU:C:2016:719, paragraph 27 and the case-law cited).
33


Consequently, when the use of a sign gives rise, in one part of the European Union, to a likelihood of confusion with an EU trade mark, whilst, in another part of the European Union, that same use does not give rise to such a likelihood of confusion, there is an infringement of the exclusive right conferred by that trade mark. In that case, the European Union trade marks court hearing the case must prevent the marketing of the goods concerned under the sign at issue throughout the entire territory of the European Union, with the exception of the part in respect of which there has been found to be no likelihood of confusion (judgment of 22 September 2016, combit Software, C‑223/15, EU:C:2016:719, paragraphs 25 and 36).
36


It is clear, moreover, from the case-law of the Court that the examination of the likelihood of confusion in part of the European Union must be based on a global assessment of all the relevant factors in the case concerned and that that assessment must include a visual, phonetic or conceptual comparison of the mark and the sign used by the third party, which may lead, in particular for linguistic reasons, to different conclusions for one part of the European Union and for another (see, to that effect, judgment of 22 September 2016, combit Software, C‑223/15, EU:C:2016:719, paragraphs 31 and 33 and the case-law cited).
41


That global assessment must, as regards the visual, auditory or conceptual comparison between the EU trade mark at issue and the sign used by the third party, be based on the overall impression produced by that mark and that sign on the relevant public, which comprises the average consumer of the goods or services concerned, who is reasonably well informed and reasonably observant and circumspect (see, to that effect, judgment of 25 June 2015, Loutfi Management Propriété Intellectuelle, C‑147/14, EU:C:2015:420, paragraphs 21 and 25 and the case-law cited).
44


The restriction of the exclusive right conferred by Article 9 of Regulation No 207/2009 to which T & S refers is subject to the condition that the use of the sign with the indication of geographical origin complies with honest practices in industrial or commercial matters. In order to examine whether that condition, which is an expression of an obligation of loyalty to the legitimate interests of the proprietor of the mark, is satisfied, the court hearing the case must make a global assessment of all the relevant circumstances (see, inter alia, judgments of 7 January 2004, Gerolsteiner Brunnen, C‑100/02, EU:C:2004:11, paragraphs 24 and 26; of 16 November 2004, Anheuser-Busch, C‑245/02, EU:C:2004:717, paragraphs 82 and 84; and of 17 March 2005, Gillette Company and Gillette Group Finland, C‑228/03, EU:C:2005:177, paragraph 41).
45


In that regard, account should be taken, in particular, of the overall presentation of the product marketed by the third party, the circumstances in which a distinction is made between that mark and the sign used by that the third party, and the effort made by that third party to ensure that consumers distinguish its products from those of which it is not the trade mark owner (see, to that effect, judgment of 17 March 2005, Gillette Company and Gillette Group Finland, C‑228/03, EU:C:2005:177, paragraph 46).
50


The extended protection conferred by Article 9(1)(c) of that regulation on proprietors of EU trade marks with a reputation consists in empowering those holders to prohibit any third party from making, in the course of trade and without the consent of the proprietor, use without due cause of an identical or similar sign — whether for similar goods or services or for goods or services not similar to those for which those marks are registered — which takes unfair advantage of the distinctive character or the repute of those marks or is detrimental to that distinctive character or repute (see, to that effect, judgment of 22 September 2011, Interflora and Interflora British Unit, C‑323/09, EU:C:2011:604, paragraphs 68 and 70).
51


So that the proprietor of an EU trade mark has that extended protection, it must be established, within the meaning of Article 9(1)(c) of that regulation that that mark has a ‘reputation in the [European Union]’. To that end, it is sufficient that it be established that the mark has such a reputation in a substantial part of the territory of the European Union, and that part may, in some circumstances, correspond to the territory of a single Member State. If that condition is satisfied, the EU trade mark at issue must be held to have a reputation in the whole of the European Union (judgments of 6 October 2009, PAGO International, C‑301/07, EU:C:2009:611, paragraphs 27, 29 and 30, and of 3 September 2015, Iron & Smith, C‑125/14, EU:C:2015:539, paragraphs 19 and 20).
58


Moreover, it is clear from the settled case-law of the Court that the examination of the existence of an infringement referred to in Article 9(1)(c) of Regulation No 207/2009 must be based on a global assessment which takes into account all the factors relevant to the case (judgments of 18 June 2009, L’Oréal and Others, C‑487/07, EU:C:2009:378, paragraph 44, and of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 39).