On September 22, 2016, the European Court of Justice ruled on a question concerning the relationship between the unitary character of the European Union trademark and the territorial scope of the inhibitory and other sanctions against counterfeit of the trademark, in the situation that this counterfeit is identified only in a specific region of the EU. The case in question concerns the trademark “Combit,” belonging to a German company and the trademark “Commit,” belonging to an Israeli company. Both of these companies are active in the sector of software commercialization and development also on the internet.
The Court held that if a national court (in its capacity to deal with EU trademarks) determines that the use of a sign produces the likelihood of confusion with a trademark of the European Union in one part of the EU territory and not in another, then the Court “must declare an infringement of the exclusive right granted by that trademark and order the termination of such use in the entire territory of the EU, with the exception of the region where there was no likelihood of confusion.” In evaluating the likelihood of confusion, the Court established that there must be a phonetic, visible and conceptual similarity between the signs in conflict so to be able to identify precisely the regions of the EU that were affected by the infringement or likelihood of confusion between the opposing signs.
In the present case, the risk was proven in the average German-speaking consumer, but not in the average English-speaking consumer since the phonetic similarity between the terms “Combit” and “Commit” is neutralized from the semantic difference between the terms for English-speaking consumers.
This interpretation would seem at odds with the principle of unity for the EU trademark, established as the cornerstone of Regulation 207/2009 Art. 1, whereby the effects of the trademark extend to all Member States and – of course – this must be valid also for the cessation of the effects: the trademark will not be able to be declared null in one single state and valid in another, but null or valid for all of the Community. In this regard, the Court established that the interpretation of the territorial scope of the injunction stated above does not affect the character of unity of the EU trademark “as long as the right is reserved for the owner of the trademark to prohibit any use that compromises the trademark’s functions” and, in particular, the function of indicating the source or origin.