Limits on the unitary effect of the European trade mark

Based on its European "Combit" trade mark, Combit Software launched an action for infringement against a company regarding the use of the "Commit" sign to designate similar goods and services, and petitioned the German court seized to issue a ban on the use of the sign in dispute throughout the European Union in accordance with Article 102 of Regulation No. 207/2009 of 26 February 2009 on the European Union Trade Mark (EUTMR).

The German courts hold that, although a risk of confusion in the minds of the German-speaking public exists, the same risk does not exist for the English-speaking public as it knows how to identify the contraction of the prefix "com" (for "computer") and "bit" (for "binary digit") in the sign in dispute. Therefore, the appeal court asked the Court of Justice of the European Union (CJEU) whether it is possible - when a risk of confusion exists regarding a European Union Trade Mark - to geographically limit the scope of the ban on the use of the sign in dispute despite the unitary effect of the European Trade Mark.

According to the principle set out in Article 1 of the EUTMR, "An EU trade mark shall have a unitary character. It shall have equal effect throughout the Union: […] nor shall its use be prohibited, save in respect of the whole Union", unless otherwise provided in the regulation.

First, the CJEU states that the risk of confusion in the German-speaking portion of the European Union necessarily causes an infringement of the exclusive right conferred by the trade mark in question.
However, based on the solution it had reached in the DHL Express France case (CJEU, 12 April 2011, C-235/09, DHL Express France SAS v/ Chronopost SA), the Court emphasises that although the litigious sign only creates a risk of confusion in one part of the European Union, in particular due to language comprehension issues, the Court must limit the territorial scope of said ban. A total ban, in the absence of a risk of confusion, would go beyond the exclusive right conferred by the trade mark (CJEU, 22 September 2016, C-223/15, Combit Software). Endeavouring to limit the scope of the ban, the Court must indicate which Member States are excluded; it is not sufficient to exclusively refer to "English-speaking" Member States.

While this decision seems to alter the unitary character of the European Union trade mark, it is nevertheless simply an exception thereto. Therefore, as a matter of principle, the ban will cover the entire European Union, and the defendant is responsible for proving that the ban on the use of the trade mark is not justified in certain Member States.