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As a rule, infringement of an EUTM entitles the owner to remedies across the whole EU. However, in a recent case about software trade marks, the CJEU has clarified when there will be exceptions to that rule.

Combit owns an EUTM for a logo mark which includes the word “COMBIT” for software (above left), and uses it in respect of customer relationship management software. An Israeli company Commit uses the logo “Commit CRM” for CRM software (above right).

Combit sued for infringement of its EUTM in respect of Commit’s use in the EU before the Düsseldorf Court. It also sued under an equivalent German trade mark. The German first instance and appeal courts held that the marks were confusingly similar for German speakers but that for English speakers they were not because of the conceptual difference between the words.

The main issue in the case related to the scope of the injunction: if there is the likelihood of confusion in one territory within the EU does the unitary effect of an EUTM require that an injunction be granted across the EU?

In DHL France v Chronopost in 2011, the CJEU had held that “as a rule” an injunction to stop infringement of an EUTM should extend to the entire area of the EU, in order to ensure uniform protection. However, if in fact the infringement’s effect on the functions of the EUTM would be limited to a smaller part of the EU the injunction should be limited to that part.

In Combit, the CJEU held that the EUTM was infringed if there was a likelihood of confusion in any part of the EU. However, following DHL, if there is no such likelihood in some parts of the EU then an injunction should not extend to those parts. The trade mark proprietor’s rights are limited to protecting its “specific interests as such, that is to say, to ensure that the mark is able to fulfil its functions”. In this case there was no likelihood of confusion in some places, for linguistic reasons.

For clarity, it should be noted that this principle applies in cases where the relevant Court potentially has the power to grant pan EU relief, i.e. cases where the Court’s jurisdiction is based on domicile or place of establishment. In cases where the Court’s jurisdiction derives from where the infringement is taking place, the Court’s remedies are limited to that Member State.

Combit Software GmbH v Commit Business Solutions Limited CJEU 22 September 2016 C223/15.