The CJEU returns to the consequences of the unitary character of EU trade marks in its recent combit / Commit ruling of 22 September 2016. The court confirms the principles it had laid down in Chronopost in 2011: The aim of protecting the trade mark functions trumps territoriality.

Or, in other words: If the use of a younger mark does not cause confusion with an older EUTM in parts of the EU, then the rights inherent in the older EUTM do not extend to a prohibition for those territories.

An EU trade mark court with EU-wide jurisdiction pursuant to Art. 98 (1) of the EU Trade Mark Regulation (EUTMR) is therefore obliged to restrict the territorial scope of a prohibition order: Use of the younger mark may only be prohibited if it actually infringes in that territory. In combit / Commit, the German infringement court at first instance had limited its order to Germany. It said that for the English speaking EU population, the conceptual differences between the marks were so clear that an EU-wide order was out of the question. In Germany, on the other hand, where Commit was used for software, these differences were not so readily apparent, leaving a confusing phonetic similarity. The referring German appeal court was uncertain whether this ruling contravened the fundamental principle of unitary character enshrined in Art. 1 (2) EUTMR or not.

The CJEU clearly sees no hazard to the unitary nature of EUTMs. It holds that as long as the integrity of the trade mark function is guaranteed throughout all EU territories where these functions are adversely affected, the unitary character is safeguarded. The court places the burden of proof on the defendant to show that for certain EU territories no infringement occurs. Interestingly, the court in this context does not even draw national boundaries: It only refers to “linguistic areas” and orders the national courts to define very clearly to which territories within the EU their orders extended. An order only applying to French-speaking territories might therefore cover only parts of Belgium or Luxembourg.

The judgment is one of many in which the CJEU has defined the scope of unitary character. In the past, the court already held that:

  • proper use of an EU trade mark can be met by use in only part of the EU, which could even be one member state only (ONEL / OMEL judgment);
  • reputation can be gained through use in a significant part of the EU territory (PAGO judgment); and
  • an opposition is well-founded if the opposition mark is adversely affected only in part of the EU (Armacell judgment).

The recent combit / Commit might appear to conflict with Armacell, but it doesn’t really: That an older EUTM can block the registration of a younger EUTM as a whole, even if it is only affected in parts of the EU, is in itself a confirmation of unitary character: In the Armacell opposition proceedings, two unitary EU marks were in conflict, and the decision was an all or nothing one. Meanwhile, in combit / Commit, the older EU mark is maintained with all its unitary effect despite the partial territorial order: Since the EUTM was only challenged by local acts of infringement, the infringement court needed to go no further to safeguard the integrity of the mark.