Editor's note: To determine whether there is confusion with the identifier, Which language area should prevail? and, When determining the territorial scope of the EU ban on trademark infringement, It should be recognized as the whole of the European Union, It still needs to be treated differently according to the circumstances of different member states? Let's look at the case!

[background] German company Combit Software, Registered trademark in Germany and EU "COMBIT" (As shown in Figure 1) The trademark owner of, File a trademark infringement suit in a German court, Think that Israeli companies Commit Business Solutions (Hereinafter referred to as CBS) Used on the German website "COMMIT" The act of marking software products for sale violates its trademark rights. Figure 1 At the first trial, The German District court of Dusseldorf rejected the ruling Combit Software requirement CBS Stop using it across the European Union "COMMIT" A claim for identification, Mere prohibition CBS Use the logo in Germany. subsequently, Combit Software An appeal was filed with the High Court of the German state of Dusseldorf, He asked the court to uphold all his claims. The court heard that, For consumers in German-speaking areas, Use by the defendant "COMMIT" Literal identifier, Exists with EU trademark "COMBIT" Risk of confusion. But English-speaking consumers, English verbs are easily distinguished conceptually "commit" The combination of words and meanings "combit" –By word "computer (computer) " The first half of it "com" And representative "Binary digit (binary digit) " the "bit" composition, So there is no confusion about the origin of the two identifiers. Thus, The High Court of Dusseldorf asked the Court of Justice of the European Union the following question, And request a preliminary determination (preliminary ruling) : To determine whether the above identifiers are confused, Which language area should prevail? and, When determining the territorial scope of the EU ban on trademark infringement, It should be recognized as the whole of the European Union, It still needs to be treated differently according to the circumstances of different member states?

[discover] The Court of Justice of the European Union first confirmed, Even if only in one part of the EU rather than across it–Specific to this case, That is, in German-speaking areas–There is a risk of confusion about the origin of the goods, Such use should be considered a violation of EU trademark rights. further, The court of Justice of the European Union explains what should be done after finding an infringement. In dealing with trademark infringement cases similar to this one, The EU Trademark Court should prohibit the use of infringing marks within the EU, However, areas where there is no confusion about the source of the sign should be excluded. The Court also stated that, The defendant shall bear the burden of proof, To prove that its use of the logo would not cause confusion in parts of the EU. Therefore, The EU Trademark Court must be precise in its judgment, The EU area excluded from the area where the use of infringing marks is prohibited. In this regard, The Court of Justice of the European Union held that in this case, Used by relevant courts in Germany "English area (English-speaking) " The concept of demarcation excludes areas, Fall short of "accuracy" request.

[comment] In this case, the Court of the European Union confirmed the identification standard of infringement of the EU trademark right, It is consistent with the principle of the previous ruling on the objection of EU trademark application on the grounds of infringement of prior trademark right: Even though the use of infringing marks is only confused with prior mark sources in parts of the EU, Is enough to reject the EU trademark application. In answer to the question of infringement injunctions and limiting the scope of the injunctions, The European Court of Justice cited an earlier ruling in DHL Express France (C-235/09, 2011 years 4 month 12 day) The relevant ruling in the case. In that earlier ruling, the European Court of Justice said, In principle, An injunction to prevent the continuation of an act which infringes or is likely to infringe an EU trademark, It applies throughout the European Union. But at the same time in the ruling–The first 48 Natural segment–Exceptions to the above principle are provided. If the defendant can provide evidence to prove it, There will be no infringement in certain parts of the EU, Especially not because of language and so on, It adversely affects the function of EU trademark, so, The EU specific region can be excluded from the EU Trademark Court injunction. At first glance, It seems that the ruling goes against the EU principle of trademark uniformity. The Court is also aware that public access to the decision may raise such questions, Therefore, it is emphasized in the ruling that the ruling does not contradict the principle of unity, Limiting the geographical scope of the injunction does not infringe the right of the trademark owner to prohibit others from damaging the function of the trademark. but, In its ruling, the court did not make clear the logic behind this conclusion.

author: Carlos MORÁN, Junior partner compilation: Li Fangqian, The source of Aisabri interns: Esabaril (ELZABURU) Intellectual property rights