Is confusion in one Member State sufficient or is confusion in all Member States required?

At the end of last month (September 2016) the Court of Justice of the European Union (CJEU) handed down its decision on the question of whether, in order to claim for infringement of a registered trade mark, the owner of an EU trade mark needs to prove confusion across the whole of the European Union, or whether confusion in certain Member States is sufficient.

The claimant in question was Combit Software GmbH (Combit). Combit owns both a national German trade mark and an EU trade mark for the word COMBIT in relation to software, specifically CRM software. Commit Business Solutions Ltd (Commit), the defendant, is an Israeli company which uses the mark COMMIT on its website in relation to CRM software. Commit’s website is available across the EU, including Germany and at the time the claim arose, there was also a German-language version of the website.

Combit sought an injunction against Commit in the EU and, in the alternative, in Germany. At first instance the German courts dismissed the application for an EU-wide injunction, but upheld the alternative claim on the basis of the German trade mark. The court held that for German speakers the words COMBIT and COMMIT were confusingly similar; however, English-speakers would be able to differentiate between the two words based on their conceptual differences.

Commit appealed this decision. The German appeal court upheld the decision of the lower court, but posed an interesting question for the CJEU – if there is a likelihood of confusion in only some Member States and not across the whole of the EU, could an injunction be granted for the whole of the EU or must the Member States each be considered on an individual basis?

The CJEU held that an EU trade mark has been infringed if there is a likelihood of confusion in any Member State. If, however, that confusion can be excluded from certain States, then these countries should be exempted from any injunction.

Furthermore, when issuing a partial injunction, the national court must be specific when defining the territory to which the injunction applies. Merely stating “English speaking areas” is far too vague – who could determine the level of English spoken in each Member State, or the level required for the State to be considered an “English speaking area”?

This case clarifies that despite an EU trade mark having a unitary effect in the sense that it applies equally across all Member States and confusion in one State means infringement of the mark, where it is possible to exclude a Member State from the risk of confusion then any injunction sought or granted should be exempted from the excluded States.