Trade Mark Validity - It All Depends

A recent ruling by the Court of Justice of the European Union (CJEU) has implications for the owners of trade marks which are only used in part of the EU.

The nub of the ruling is that if a court in the EU finds that an EU trade mark may cause confusion in one part of the EU, it should normally rule that there is a trade mark infringement which covers the whole of the EU: however, there may be exceptions.

The case arose out of a trade mark dispute in Germany, in which an Israeli company's trade mark was found to have infringed that of a German company. The German court considered that confusion was only likely to occur in German-speaking countries, so referred to the CJEU the question of whether the ban should be EU-wide or restricted to German-speaking countries.

The CJEU ruled that where it can be shown that there is no likelihood of confusion arising between the trade marks in some countries, the court should rule precisely on the scope of the territory over which the trade mark is valid and not seek to enforce it across the whole of the EU. Otherwise, enforcement will extend across the whole of the EU.