The EU trademark is a uniform protection title for the entire territory of the EU. On the one hand, it must fulfill the protection requirements as a whole. In particular, it must be protectable in every relevant language area of the EU. On the other hand, it is infringed or not infringed as a whole. However, because the scope of protection of the Trademarks is defined by the criterion of Risk of Confusion, the understanding of the language plays a decisive role. However, this is not uniform. What does this mean for the injunction?
The German company Combit Software GmbH has applied for registration of the word “combit” as a German trademark and as a European Union trademark for goods and services in the field of information technology. Based on these Trademarks, Combit Software filed a Lawsuit against the Israeli company Commit Business Solutions Ltd, because the latter distributed software via the internet under the trademark “Commit”. Combit requested that Commit Business Solutions be prohibited from using “Commit” in the EU and in Germany on the grounds of infringement of the EU trademark (main request) and the German Trademarks (auxiliary request).
The Düsseldorf Regional Court dismissed the main claim but upheld the alternative claim. On appeal, the Higher Regional Court found that there was a Risk of Confusion for the average German-speaking consumer, but not for the average English-speaking consumer. The average English-speaking consumer could easily understand the conceptual difference between the English verb “to commit” on the one hand and “combit” composed of “com” for “computer” and “bit” for “binary digit” on the other. The phonetic similarity of the conflicting Trademarks is therefore neutralized by the conceptual difference.
In view of this situation, the Higher Regional Court referred the question to the ECJ as to how to deal with the request for an injunction if there is a Risk of Confusion for certain language regions of the EU but not for others.
The ECJ decides the following:
European Union Trademarks law protects the owner of a trademark against any use that impairs or could impair the function of that trademark as an indication of origin.
Because the EU trademark is a unitary right, it can only be infringed as a whole. Therefore, if there is a Risk of Confusion for only one language area, the court must affirm the trademark infringement. This is not least a consequence of the established jurisprudence, according to which the registration of a later trademark can already be refused if it is confusingly similar to an earlier trademark for only one part of the Union, e.g. for one Member State.
A direct consequence of a finding of trademark infringement is that the continuation of the infringing acts must be prohibited. Because EU trademark law is uniform, the prohibition of the infringing act must, in principle, extend to the entire territory of the EU.
However, the General Court cannot prohibit acts that are to be regarded as legitimate trade in one part of the Union. A prohibition must therefore be limited to the extent that lawful trade remains possible in areas where there is no Risk of Confusion.
If the court excludes a part of the Union from the prohibition, it must define that part precisely. The indication “English-speaking territory” is not sufficient.
Note: With this decision, the CJEU is attempting to bridge the fundamental contradiction between the multilingualism of the EU and the uniformity of the law. Because the scope of protection of the Trademarks depends on the “mother tongue of the user” and thus on the place of use of the trademark, the EU trademark cannot have the same effect throughout the EU. The principle of uniform law had to be breached in the present case, even if the CJEU disputes this.