Peaceful coexistence between marks in part of EU does not mean no likelihood of confusion in other part of EU

TRADEMARK LAW

The fact that EU trade mark and national mark peacefully coexist in part of the European Union 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. The European Union trade marks court hearing an infringement action, may take into account a part of the European Union not covered by that action, provided that the market conditions and the sociocultural circumstances are not significantly different in both of those parts of the European Union.

"38. Article 9(1)(b) of Regulation No 207/2009 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.

46. Although, for the purpose of assessing whether Ornua is entitled to prohibit the use of the sign KERRYMAID in Spain, the referring court should consider taking into account elements present in Ireland and the United Kingdom, it should first of all ensure that there is no significant difference between the market conditions or the sociocultural circumstances which may be observed, respectively, in the part of the European Union covered by the infringement action and in that in which the geographical area corresponding to the geographical word contained in the sign at issue. It cannot be excluded that the conduct which can be expected of the third party so that its use of the sign follows honest practices in industrial or commercial matters must be analysed differently in a part of the European Union where consumers have a particular affinity with the geographical word contained in the mark and the sign at issue than in a part of the European Union where that affinity is weaker.

47. In the light of the foregoing, the answer to the second question is that 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.

57. As has already been pointed out in paragraph 35 of the present judgment, it is also common ground that such peaceful coexistence is absent in the part of the territory of the European Union which is the subject of the infringement action, namely Spain, and that T & S’s use of the sign KERRYMAID takes place there without Ornua’s consent.

59. It follows that, in the present case, where there is due cause legitimizing the use of the sign KERRYMAID in Ireland and the United Kingdom because of the peaceful coexistence between the KERRYGOLD EU trade marks and the national mark at issue in those two Member States, the European Union trade marks court hearing an infringement action in respect of the use of that sign in another Member State cannot merely base its assessment on that peaceful coexistence in Ireland and the United Kingdom, but must, on the contrary, make a global assessment of all the relevant factors.

60. Therefore, the answer to the third question is that 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."

IPPT20170720, CJEU, Ornua v Tindale

C-93/16 - ECLI:EU:C:2017:571