One of the major advantages of EU intellectual property rights (EU trademark, Community designs) is their uniform effect across the entire EU. In particular, when it comes to an infringement, it is possible to obtain a court order prohibiting the use in all EU member states simultaneously.

However, in a very recently published preliminary ruling the European Court of Justice (CJEU, judgment of 22/9/2016 – C-223/15 – combit) establishes an exemption from that EU-wide effect, in cases that a likelihood of confusion exists in some parts of the EU, whereas in other parts it does not. According to the CJEU, the legitimacy of using the sign is to be measured with the principle of free movement of goods and services. Where an EU trademark court concludes that there is no likelihood of confusion in a part of the EU, legitimate trade arising from the use of the sign in question in that part of the EU cannot be prohibited. In the Court’s view, such a prohibition would go beyond the exclusive right conferred by the EU trademark, as that right merely permits the proprietor of that mark to protect his specific interests as such, to ensure that the mark is able to fulfil its functions (see: CJEU, judgment of 12/4/2011 – C‑235/09 – DHL Express France).

Even tough, it is the defendant’s responsibility according to the court, to present the relevant facts that lead to the conclusion, in which parts of the EU a likelihood of confusion does not exist: If an EU trademark proprietor seeks to enforce an EU-wide prohibition, he has no other option but to assess the likelihood of confusion in each EU member state individually and, if necessary, to limit its request for prohibition on the relevant member states. This question will arise in particular if the signs at issue comprise elements, which will be understood as descriptive in some member states resulting in a lack of similarity of those signs there.