An EU trade mark is a unitary right, providing the proprietor with the same exclusive rights throughout the EU. However, what should happen where a mark and sign co-exist in one part of the EU, but there is a claim for infringement in another?
The owners of KERRYGOLD EUTMs claimed infringement in Spain for use of the sign KERRYMAID. The Alicante Commercial Court referred three questions to the CJEU, focusing on how to apply the peaceful coexistence of the mark and sign in the UK and Ireland to the Spanish proceedings. The CJEU decided, broadly, that the peaceful coexistence and geographical, demographic, economic or other circumstances prevalent in some Member States should form part of the global assessment of likelihood of confusion and due cause, but was not itself definitive. The court should have regard to the different market conditions and sociocultural circumstances between Member States. Accordingly, a trade mark proprietor can prevent infringement in any part of the EU, whether or not such infringement extends throughout the EU (and so, an agreement to co-exist in one part of the EU will not prevent an infringement claim in another).
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