EU trade mark confusion considered by CJEU

The case was initiated by Combit Software GmbH who owned a national German trade mark and an EU trade mark for ‘Combit’.

They sought a claim against an Israeli company, Commit Business Solutions Ltd who website related to software was available across the EU including in Germany with a German language version, using the mark ‘Commit’

Combit held that the use of ‘Commit’ caused confusion with their mark and sought an injunction to prevent it use. They sought this injunction across the EU, or alternatively just in Germany.

At first instance, the request for an EU wide injunction was refused but the German Court did allow a German injunction on the basis of Combit’s German trade mark. In German, the words were to be deemed confusingly similar but the court held that English-speakers would be able to differentiate between the words therefore no confusion EU wide.

The case was appealed by Commit to the German Appeal Court who sought a preliminary ruling from the CJEU asking the question:

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 European court held that an infringement of any EU trade mark can occur when there is a likelihood of confusion in any member state. However, an injunction to prevent further ruse of the infringing mark needs to take into account any exclusion of confusion that may occur in any particular state. The injunction would then have to be specific on what states were excluded, using ‘English speaking states’ was not enough.

Therefore, it seems that while a trade mark registered in the EU can only be deemed confusing in one member state, which may not be enough for an injunction to be agreed to that covers the whole of the EU

For more information on trade mark infringement, contact Jane at The Trademarkroom.

By Ellis Sweetenham