Case C‑93/16

Ornua Co-operative Ltd

Tindale & Stanton Ltd España SL

(Request for a preliminary ruling
from the Audiencia Provincial de Alicante)

(Reference for a preliminary ruling — Intellectual property — EU trade mark — Unitary character — Regulation (EC) No 207/2009 — Article 9(1)(b) and (c) — Uniform protection of the right conferred by an EU trade mark against the likelihood of confusion and detriment to reputation — Peaceful coexistence of that mark with a national mark used by a third party in part of the European Union — Absence of peaceful coexistence elsewhere in the European Union — Perception of the average consumer — Differences of perception may exist in different parts of the European Union)

Summary — Judgment of the Court (Second Chamber), 20 July 2017

EU trade mark—Effects of the EU trade mark—Rights conferred by a trade mark—Right to prohibit the use of the mark—Use of an identical or similar sign covering identical or similar products or services—Likelihood of confusion with the mark—Criteria for assessment—Peaceful coexistence between an EU mark and a national mark used by a third party in part of the European Union—Absence of such peaceful coexistence in another part of the European Union—Absence of the likelihood of confusion—Not permissible

(Council Regulation No 207/2009, Art. 9(1)(b))
EU trade mark—Effects of the EU trade mark—Rights conferred by a trade mark—Right to prohibit the use of the mark—Use of an identical or similar sign covering identical or similar products or services—Likelihood of confusion limited to a part of the European Union—Criteria for assessment—Account taken of relevant factors present in part of the European Union in order to prohibit the use of a sign in another part of the Union—Conditions

(Council Regulation No 207/2009, Art. 9(1)(b))
EU trade mark—Effects of the EU trade mark—Rights conferred by a trade mark—Right to prohibit the use of the mark—Use of an identical or similar sign covering identical or similar products or services—Likelihood of confusion with the mark—Criteria for assessment—Peaceful coexistence between an EU mark with a reputation and a sign in part of the European Union—Absence of such peaceful coexistence in another part of the European Union—Existence of due course legitimising the use of that sign—None

(Council Regulation No 207/2009, Art. 9(1)(c))

Article 9(1)(b) Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark must be interpreted as meaning that the fact that, in part of the European Union, an EU trade mark and a national mark peacefully coexist, does not allow the conclusion that in another part of the European Union, where peaceful coexistence between that EU trade mark and the sign identical to that national mark is absent, there is no likelihood of confusion between that EU trade mark and that sign.

If the proprietor of the EU trade mark was only protected against infringements committed throughout the entire territory of the European Union, he would not be able to contest the use of identical or similar signs which give rise to a likelihood of confusion in only part of that territory, even though Article 9(1)(b) of Regulation No 207/2009 is intended to protect that proprietor, throughout the European Union, against any use which adversely affects his trade mark’s function of indicating origin.

Consequently, when the use of a sign gives rise, in one part of the European Union, to a likelihood of confusion with an EU trade mark, whilst, in another part of the European Union, that same use does not give rise to such a likelihood of confusion, there is an infringement of the exclusive right conferred by that trade mark. In that case, the European Union trade marks court hearing the case must prevent the marketing of the goods concerned under the sign at issue throughout the entire territory of the European Union, with the exception of the part in respect of which there has been found to be no likelihood of confusion (judgment of 22 September 2016, combit Software, C‑223/15, EU:C:2016:719, paragraphs 25 and 36).

It is clear, moreover, from the case-law of the Court that the examination of the likelihood of confusion in part of the European Union must be based on a global assessment of all the relevant factors in the case concerned and that that assessment must include a visual, phonetic or conceptual comparison of the mark and the sign used by the third party, which may lead, in particular for linguistic reasons, to different conclusions for one part of the European Union and for another (see, to that effect, judgment of 22 September 2016, combit Software, C‑223/15, EU:C:2016:719, paragraphs 31 and 33 and the case-law cited).

(see paras 32, 33, 36, 38, operative part 1)
Article 9(1)(b) of Regulation No 207/2009 must be interpreted as meaning that the elements which, according to the European Union trade marks court hearing an infringement action, are relevant for assessing whether the proprietor of an EU trade mark is entitled to prohibit the use of a sign in part of the European Union not covered by that action, may be taken into account by that court to assess whether that proprietor is entitled to prohibit the use of that sign in the part of the European Union which is the subject of the infringement action, provided that the market conditions and the sociocultural circumstances are not significantly different in one of those parts of the European Union and in the other.

(see para. 47, operative part 2)
Article 9(1)(c) of Regulation No 207/2009 must be interpreted as meaning that the fact that, in part of the European Union, an EU trade mark with a reputation and a sign peacefully coexist, does not allow the conclusion that in another part of the European Union, where that peaceful coexistence is absent, there is due cause legitimising the use of that sign.

(see para. 60, operative part 3)