Trade marks: co-existence and infringement

By Audrey Horton



The European Court of Justice (ECJ) has ruled that infringement of a sign in another EU member state cannot be based only on peaceful co-existence in Ireland and the UK, but must be made on a global assessment of all relevant factors.


A registered trade mark owner of an EU trade mark (EUTM) has the right to prevent unauthorised third parties from using, in the course of trade, an: 

  • Identical or similar sign for identical or similar goods or services to those for which the EUTM is registered, where there exists a likelihood of confusion or association on the part of the public (Article 9(1)(b), EUTM Regulation (207/2009/EC)) (Article 9(1)(b)).
  • Identical or similar sign to the EUTM where the EUTM has a reputation in the EU, and where the use of the sign is without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or repute of the EUTM (Article 9(1)(c), EUTM Regulation) (Article 9(1)(c)).

Although the scope of EU trade marks is pan-European, if national trade mark courts find that infringement is limited to a single member state or to part of the EU, they must limit the territorial scope of prohibition orders (DHL Express France SAS v Chronopost SA C-235/09).


O, which owned the registered EU word mark KERRYGOLD and two figurative EU trade marks, sought a declaration that the import and distribution of margarines in Spain under T's word mark KERRYMAID, registered in Ireland and the UK but used on an unregistered basis in Spain, was an infringement of the KERRYGOLD marks under Article 9(1)(b) and (c) of the EUTM Regulation. T claimed that the sign used by it in Spain was not similar to the KERRYGOLD marks and could not give rise to a likelihood of confusion under Article 9(1)b) since the element "Kerry", an Irish county, was an indication of geographical origin. The marks had peacefully co-existed for some years in Ireland and the UK, but not in Spain.

The Spanish court dismissed the infringement action. It held that the peaceful co-existence between the KERRYGOLD EU trade marks and the KERRYMAID mark in Ireland and the UK should, in view of the unitary character of the EU trade mark, lead to the conclusion that there was no likelihood of confusion between those marks throughout the entire area of the EU. O appealed.

The Spanish court referred the matter to the ECJ for a preliminary ruling. 


The ECJ held that the peaceful co-existence of marks in two member states did not rule out a likelihood of confusion in other member states of the EU. Infringement of an EU trade mark did not require a likelihood of confusion to exist in all EU member states; the owner could sue for infringement in respect of acts committed in one or several states. Where an EU trade marks court held that a mark had been infringed in one country, it had to prevent the marketing of the infringing goods in all EU member states other than those where it had found that there was no likelihood of confusion (as was the case, in the Spanish proceedings, in Ireland and the UK). In respect of those states where there was no consent or acquiescence, the court had to make the global assessment of likelihood of confusion in the usual way.

The court could base its assessment of likelihood of confusion in the country of infringement on geographical, demographic and economic circumstances prevailing in other member states, but only to the extent that those circumstances were not significantly different between the two countries.

Where market conditions or other circumstances did not significantly differ from one part of the EU to another, those factors could be taken into account when assessing infringement in another member state, or indeed in all other member states of the EU. Account had to be taken of T's overall presentation of its product, how it distinguished its sign from O's mark, and any efforts made by T to ensure that consumers distinguished its products from those of other traders. Although the referring court could take into account these matters as they appeared from evidence relating to the UK and Ireland, it had to ensure that there was no significant difference between the market conditions and sociocultural climate there, and those prevailing in Spain. It was possible that T's conduct, and the standard of honest practices in industrial and commercial matters, would have to be analysed differently in the UK and Ireland, where the word "Kerry" was likely to be understood as a geographical indication, and Spain, where it was not.

The fact that a mark and a later sign have co-existed within the EU does not constitute due cause legitimising the use of the sign. Case law had established that if a mark had a reputation in a substantial part of the EU, that reputation was deemed to extend to the entire EU. However, that mark could be infringed in a single member state; there was no need to prove infringement in all member states. Here, it was clear that T had due cause for its use of its sign in the UK and Ireland, as O had acquiesced in those countries. This did not mean, however, that the Spanish court had to accept acquiescence in those countries as constituting due cause for using the sign in Spain.


Although the EUTM has a unitary character, it is possible for the owner to consent to the use of a similar mark or sign in specific territories, or, for example, to licence use of the mark itself. This decision confirms that consent or acquiescence in one member state cannot be determinative of whether infringement has occurred in other member states, and in this regard it is consistent with DHL v Chronopost.

Case: Ornua Co-operative Ltd v Tindale & Stanton Ltd C-93/16.

First published in the September 2017 issue of PLC Magazine and reproduced with the kind permission of the publishers.  Subscription enquiries 020 7202 1200.