1 This request for a preliminary ruling concerns the interpretation of Article 9 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1).
2 The request has been made in proceedings between Ornua Co-operative Ltd, formerly The Irish Dairy Board Co-operative Ltd (‘Ornua’), and Tindale & Stanton Ltd España SL (‘T & S’) concerning the use by the latter of a sign which, according to Ornua, gives rise to a likelihood of confusion with the EU trade marks of which it is the proprietor and affects the reputation of those marks.
3 Regulation No 207/2009, which repealed and replaced Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), was amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21), which entered into force on 23 March 2016. However, given the date of the facts at issue in the main proceedings, the present reference for a preliminary ruling will be considered in the light of Regulation No 207/2009 such as it was in force before that amendment.
4 Under recital 3 of that regulation: ‘For the purpose of pursuing the [EU’s] … objectives it would appear necessary to provide for … arrangements for trade marks whereby undertakings can by means of one procedural system obtain [EU] trade marks to which uniform protection is given and which produce their effects throughout the entire area of the [European Union]. The principle of the unitary character of the [EU] trade mark thus stated should apply unless otherwise provided for in this Regulation.’
5 Article 1(2) of that regulation, which forms part of Title I thereof, headed ‘General provisions’, provides ‘A[n EU] trade mark shall have a unitary character. It shall have equal effect throughout the [European Union]: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its use be prohibited, save in respect of the whole [of the European Union]. This principle shall apply unless otherwise provided in this Regulation.’
6 Title II of that regulation is entitled ‘The law relating to trade marks’. Section 2, entitled ‘Effects of [EU] trade marks’, includes, inter alia, Articles 9 and 12, which are entitled ‘Rights conferred by a[n EU] trade mark’ and ‘Limitation of the effects of a[n EU] trade mark’ respectively.
7 Under Article 9(1): ‘A[n EU] trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the [EU] trade mark in relation to goods or services which are identical with those for which the [EU] trade mark is registered; (b) any sign where, because of its identity with, or similarity to, the [EU] trade mark and the identity or similarity of the goods or services covered by the [EU] trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark; (c) any sign which is identical with, or similar to, the [EU] trade mark in relation to goods or services which are not similar to those for which the [EU] trade mark is registered, where the latter has a reputation in the [European Union] and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the [EU] trade mark.’
8 Article 12 provides: ‘A[n EU] trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade: (a) his own name or address; (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services; (c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, provided he uses them in accordance with honest practices in industrial or commercial matters.’
9 Ornua is a company incorporated under Irish law whose economic activities are in the food sector. It markets, inter alia, butter and other dairy products.
10 It is the proprietor of several EU trade marks, including the word mark KERRYGOLD, registered in 1998 for goods in Class 29 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, namely, in particular butter and other dairy products, and the following two figurative marks registered respectively in 1998 and 2011 for the same class of goods (together, ‘the KERRYGOLD EU trade marks’):
11 The goods on which those marks are affixed are exported to several countries. In the European Union, those goods are mainly sold in Spain, Belgium, Denmark, Germany, Ireland, Greece, France, Cyprus, Luxembourg, Malta, the Netherlands and the United Kingdom.
12 T & S is a company incorporated under Spanish law which imports and distributes, in Spain, margarines under the sign KERRYMAID. Those goods are manufactured in Ireland by Kerry Group plc.
13 Kerry Group has registered, in Ireland and the United Kingdom, the national mark KERRYMAID.
14 On 29 January 2014, the Irish Dairy Board Co-operative, which became Ornua on 31 March 2015, brought an infringement action against T & S before the Juzgado de lo Mercantil de Alicante (Alicante Commercial Court, Spain) in its capacity as a court dealing with EU trade marks, for a declaration that T & S, in so far as it imports and distributes margarines in Spain under the sign KERRYMAID, infringes the rights conferred by the KERRYGOLD EU trade marks. The use of the sign KERRYMAID by T & S would, in its view, give rise to a likelihood of confusion and would, without due cause, take unfair advantage of the distinctive character and repute of those marks.
15 That court first held that the only similarity between the sign KERRYMAID and the KERRYGOLD EU trade marks relates to the element ‘kerry’, which refers to an Irish county known for its cattle breeding.
16 That court then stated that it was common ground between the parties that in Ireland and in the United Kingdom the KERRYGOLD EU trade marks and the KERRYMAID national trade mark peacefully coexisted.
17 That court held that there was no likelihood of confusion between the KERRYGOLD EU trade marks and the sign KERRYMAID in Spain. Since Ireland and the United Kingdom together have a significant demographic weight in the European Union, the peaceful coexistence between those marks and that sign in those two Member States should, in view of the unitary character of the EU trade mark, lead to the conclusion that there is no likelihood of confusion between those marks and that sign throughout the entire area of the European Union.
18 Lastly, the same court held that, because of the peaceful coexistence in Ireland and the United Kingdom, there cannot be an unfair advantage taken by T & S in Spain of the distinctive character or repute of the KERRYGOLD EU trade marks.
19 On the basis of those considerations, the Juzgado de lo Mercantil de Alicante (Commercial Court, Alicante), by judgment of 18 March 2015, dismissed the infringement action.
20 That judgment was the subject of an appeal before the referring court.
21 Having regard to the finding that the peaceful coexistence between the KERRYGOLD EU trade marks and the sign KERRYMAID is established only in Ireland and the United Kingdom, the referring court has doubts as to the compatibility with Regulation No 207/2009 of the extrapolation which the court of first instance has made. If the peaceful coexistence between those marks and that sign in Ireland and the United Kingdom leads to the result that there is no likelihood of confusion in those two Member States, it does not follow that, according to the referring court, there is also no likelihood of confusion between those marks and that sign in the other Member States. Such an extrapolation would render redundant the rights conferred on the proprietor of the EU trade mark under Article 9 of Regulation No 207/2009.
22 In those circumstances, the Audiencia Provincial de Alicante (Provincial Court of Alicante, Spain) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling: ‘(1) In so far as Article 9(1)(b) of [Regulation No 207/2009] requires that, in order for the proprietor of an [EU] trade mark to prevent a third party not having his consent from using a sign in the course of trade in the cases set out in that provision, there should exist a likelihood of confusion, can this provision be interpreted as meaning that there is no likelihood of confusion where the earlier [EU] trade mark has, owing to the acquiescence of the proprietor, peacefully coexisted for some years with similar national trade marks in two Member States of the European Union, so that the absence of a likelihood of confusion in those two Member States is extended to other Member States, or to the European Union as a whole, regard being had to the unitary treatment that the [EU] trade mark requires? (2) In the situation set out in the previous paragraph, can the geographical, demographic, economic or other circumstances of the States in which the coexistence has occurred be taken into consideration for the purpose of assessing the likelihood of confusion, so that the absence of a likelihood of confusion in those Member States can be extended to a third Member State, or to the European Union as a whole? (3) With regard to the case referred to in subparagraph (c) of Article 9(1) of [Regulation No 207/2009], must this provision be interpreted as meaning that, where an earlier trade mark has coexisted with the contested sign for a certain number of years in two European Union Member States without the proprietor of the earlier trade mark opposing it, this acquiescence on the part of the proprietor towards the use of the later sign in these two States in particular can be extended to the remaining territory of the European Union for the purpose of determining whether there is due cause for a third party’s use of the later sign, on account of the unitary treatment that the [EU] trade mark requires?’
23 The Court sent the referring court a request for clarification as to whether that court is required to include, in its application of Regulation No 207/2009, an examination of the assessment made by the court of first instance according to which, in view of the presence of the geographical indication of origin ‘kerry’ in the signs at issue and the lack of similarity between the elements ‘gold’ and ‘maid’, there cannot in any event be a likelihood of confusion.
24 The referring court replied in the affirmative to that request for clarification.
25 By its first question, the referring court asks, in essence, whether Article 9(1)(b) of Regulation No 207/2009 is to be interpreted as meaning that the fact that, in part of the European Union, an EU trade mark and a national mark peacefully coexist, allows, in view of the unitary nature of the EU trade mark, the conclusion that in another part of the European Union, where peaceful coexistence between that EU trade mark and the sign identical to that national mark is absent, there is an absence of the likelihood of confusion between that EU trade mark and that sign.
26 As that question is referred from the perspective of the unitary character of the EU trade mark, it should be stated at the outset that, pursuant to that principle, expressed in recital 3 of Regulation No 207/2009 and specified in Article 1(2) thereof, EU trade marks are given uniform protection and produce their effects throughout the entire area of the European Union. Under Article 1(2), the EU trade mark may not, save as otherwise provided in that regulation, be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its use be prohibited, save in respect of the whole [of the European Union].
27 Although Article 1(2) of Regulation No 207/2009 refers only to the registration of the trade mark, the transfer thereof, the loss of the rights conferred by the trade mark and the prohibition on making use of the latter, it is, however, clear from a combined reading of that article and recital 3 of that regulation that the effects of the EU trade mark listed under Section 2 of Title II of that regulation apply, as well, in a uniform manner throughout the entire territory of the European Union.
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).
30 The uniform protection thus conferred on the proprietor of the EU trade mark by that article is to entitle that proprietor, throughout the European Union, to prohibit a third party from using, in the course of trade and without the consent of that proprietor, an identical or similar sign for identical or similar goods or services which adversely affects that trade mark’s function of indicating origin or is liable to do so and thus gives rise to a likelihood of confusion.
31 In order for the proprietor of the EU trade mark to avail himself of that right, there is no need for the use of the identical or similar sign creating a likelihood of confusion to take place throughout the entire territory of the European Union.
32 If the proprietor of the EU trade mark was only protected against infringements committed throughout the entire territory of the European Union, he would not be able to contest the use of identical or similar signs which give rise to a likelihood of confusion in only part of that territory, even though Article 9(1)(b) of Regulation No 207/2009 is intended to protect that proprietor, throughout the European Union, against any use which adversely affects his trade mark’s function of indicating origin.
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).
34 In the present case, it is clear from the documents before the Court that it is common ground between the parties to the main proceedings that there is peaceful coexistence between the KERRYGOLD EU trade marks and the national mark KERRYMAID in Ireland and the United Kingdom, since Ornua does not therefore oppose the use of that national mark in those Member States.
35 It is also common ground that such peaceful coexistence is absent in the part of the territory of the European Union which is the subject of the infringement action, namely Spain, and that T & S’s use of the sign KERRYMAID takes place there without Ornua’s consent.
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).
37 It follows, as the Advocate General stated in point 39 of his Opinion, that in a situation such as that in the case in the main proceedings, in which peaceful coexistence between EU trade marks and a sign has been found in Ireland and the United Kingdom, the European Union trade marks court hearing infringement proceedings on the use of that sign in another Member State, here the Kingdom of Spain, cannot merely base its assessment on the peaceful coexistence prevailing in Ireland and the United Kingdom. That court must, on the contrary, make a global assessment of all the relevant factors.
38 Having regard to those considerations, the answer to the first question is that Article 9(1)(b) of Regulation No 207/2009 must be interpreted as meaning that the fact that, in part of the European Union, an EU trade mark and a national mark peacefully coexist, does not allow the conclusion that in another part of the European Union, where peaceful coexistence between that EU trade mark and the sign identical to that national mark is absent, there is no likelihood of confusion between that EU trade mark and that sign.
39 By its second question, the referring court asks, in essence, whether Article 9(1)(b) of Regulation No 207/2009 must be interpreted as meaning that the elements which, according to the European Union trade marks court hearing an infringement action, are relevant to assess whether the proprietor of an EU trade mark is entitled to prohibit the use of a sign in part of the European Union not covered by that action, may be taken into account by that court to assess whether that proprietor is entitled to prohibit the use of that sign in the part of the European Union which is the subject of that infringement action.
40 As has been stated in paragraph 36 of the present judgment, the examination to be carried out by the competent European Union trade marks court must be based on a global assessment of all of the relevant factors of the case before it.
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).
42 As the Advocate General stated in points 41 and 42 of his Opinion, where the market conditions and the sociocultural or other circumstances contributing to the overall impression produced by the EU trade mark and the sign at issue on the average consumer do not vary significantly from one part of the European Union to another, there is nothing to prevent the relevant factors, the presence of which in part of the European Union has been established, being taken into account in assessing whether the proprietor of that trade mark is entitled to prohibit the use of that sign in another part of the European Union or throughout the entire territory of the European Union.
43 In the present case, as is clear from the reply to the request for clarification and to the observations submitted to the Court, T & S claims inter alia that the sign KERRYMAID, used by it in Spain, is not similar to Ornua’s KERRYGOLD EU trade marks and cannot therefore give rise to a likelihood of confusion within the meaning of Article 9(1)(b) of Regulation No 207/2009, since the element ‘kerry’ is an indication of geographical origin which, according to Article 12 of that regulation, is not covered by the exclusive right conferred on Ornua by Article 9 thereof.
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).
46 Although, for the purpose of assessing whether Ornua is entitled to prohibit the use of the sign KERRYMAID in Spain, the referring court should consider taking into account elements present in Ireland and the United Kingdom, it should first of all ensure that there is no significant difference between the market conditions or the sociocultural circumstances which may be observed, respectively, in the part of the European Union covered by the infringement action and in that in which the geographical area corresponding to the geographical word contained in the sign at issue. It cannot be excluded that the conduct which can be expected of the third party so that its use of the sign follows honest practices in industrial or commercial matters must be analysed differently in a part of the European Union where consumers have a particular affinity with the geographical word contained in the mark and the sign at issue than in a part of the European Union where that affinity is weaker.
47 In the light of the foregoing, the answer to the second question is that Article 9(1)(b) of Regulation No 207/2009 must be interpreted as meaning that the elements which, according to the European Union trade marks court hearing an infringement action, are relevant for assessing whether the proprietor of an EU trade mark is entitled to prohibit the use of a sign in part of the European Union not covered by that action, may be taken into account by that court to assess whether that proprietor is entitled to prohibit the use of that sign in the part of the European Union which is the subject of the infringement action, provided that the market conditions and the sociocultural circumstances are not significantly different in one of those parts of the European Union and in the other.
48 By its third question, the referring court seeks, in essence, to ascertain whether Article 9(1)(c) of Regulation No 207/2009 must be interpreted as meaning that the fact that, in part of the European Union, an EU trade mark with a reputation and a sign peacefully coexist, having regard to the unitary character of the EU trade mark, allows the conclusion that in another part of the European Union, where that peaceful coexistence is absent, there is due cause legitimising the use of that sign.
49 As was pointed out in paragraph 28 of the present judgment, the exclusive right conferred by the EU trade mark on its proprietor pursuant to Article 9(1) of Regulation No 207/2009, extends, as a rule, to the entire territory of the European Union.
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).
52 That case-law ensures that the proprietor of an EU trade mark can either be entitled to the extended protection conferred by Article 9(1)(c) of Regulation No 207/2009 throughout the European Union, or cannot rely on it at all. Accordingly, the scope of the protection conferred by any EU trade mark has a uniform character on the entire territory of the European Union.
53 In contrast, in order for the proprietor of an EU trade mark having that extended protection to be able to rely on his right conferred by Article 9(1)(c), it is not at all necessary that the use of the sign infringing that right takes place on the entire territory of the European Union.
54 If that proprietor were only protected against infringements committed on the entire territory of the European Union, it would be impossible to contest infringements committed in only part of that territory, even though the purpose of Article 9(1)(c) of Regulation No 207/2009 is to protect that proprietor, throughout the European Union, from any use without due cause of an identical or similar sign which takes unfair advantage of the distinctive character or the repute of those marks or is detrimental to that distinctive character or repute.
55 In the present case, subject to verification by the referring court, it does not appear to be disputed that the KERRYGOLD EU trade marks have a reputation within the meaning of Article 9(1)(c) of Regulation No 207/2009.
56 Moreover, it is clear from the documents submitted to the Court that it is common ground between the parties to the main proceedings that there is, because of the peaceful coexistence in Ireland and the United Kingdom between those marks and the national mark KERRYMAID, due reason for the use of that sign in that part of the European Union.
57 As has already been pointed out in paragraph 35 of the present judgment, it is also common ground that such peaceful coexistence is absent in the part of the territory of the European Union which is the subject of the infringement action, namely Spain, and that T & S’s use of the sign KERRYMAID takes place there without Ornua’s consent.
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).
59 It follows that, in the present case, where there is due cause legitimising the use of the sign KERRYMAID in Ireland and the United Kingdom because of the peaceful coexistence between the KERRYGOLD EU trade marks and the national mark at issue in those two Member States, the European Union trade marks court hearing an infringement action in respect of the use of that sign in another Member State cannot merely base its assessment on that peaceful coexistence in Ireland and the United Kingdom, but must, on the contrary, make a global assessment of all the relevant factors.
60 Therefore, the answer to the third question is that Article 9(1)(c) of Regulation No 207/2009 must be interpreted as meaning that the fact that, in part of the European Union, an EU trade mark with a reputation and a sign peacefully coexist, does not allow the conclusion that in another part of the European Union, where that peaceful coexistence is absent, there is due cause legitimising the use of that sign.
61 Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.