On April 12, 2011 the Court of Justice of the European Union rendered its decision in Case C-235/09 regarding a preliminary ruling on the interpretation of Article 98(1) of Council Regulation (EC) No. 40/94, which defines the territorial scope of the rulings from Community trade mark courts of the Member States.
Chronopost SA owned French and Community trade marks for “WEBSHIPPING” in Classes 35, 38, 39 and 42 relating, in particular, to services for the collection and delivery of mail. Chronopost filed suit against DHL Express (France), which had used the signs “WEB SHIPPING,” ”Web Shipping” and ”Webshipping” to designate an express mail management service accessible via the Internet. Chronopost alleged infringement of the Community trade mark WEBSHIPPING.
Acting as a second-instance Community trade mark court on the appeal, the Cour d’Appel de Paris deemed the use by DHL of the signs Webshipping and WEB SHIPPING as an infringement of Chronopost’s French and Community trade marks. Subject to a periodic penalty payment in the event of infringement of the prohibition, the court prohibited DHL from continuing to use these signs. DHL appealed this decision to the Cour de cassation1, and Chronopost brought a counter-appeal, submitting that the ruling infringed Articles 1 and 98 of Regulation No. 40/94 insofar as the prohibition against further infringement of the Community trade mark WEBSHIPPING, subject to restraining fine in the event of persistence of said infringement, did not extend to the entirety of the European Union.
In that context, the Cour de cassation stayed proceedings and referred the following questions to the Court of Justice2 for a preliminary ruling:
- Must Article 98 of Regulation [No. 40/94] be interpreted as meaning that the prohibition issued by a Community trade mark court has effect as a matter of law throughout the entire area of the European Union?
- If not, is that court entitled to apply specifically that prohibition to the territories of other Member States in which the acts of infringement are committed or threatened?
- In either case, are the coercive measures that the court, by application of its national law, has attached to the prohibition issued by it applicable within the territories of the Member States in which that prohibition would have effect?
- In the contrary case, may that court order such a coercive measure, similar to or different from that which it adopts pursuant to its national law, by application of the national laws of the Member States in which that prohibition would have effect?
With reference to the first question, the Court of Justice took into account (i) that a Community trade mark court holds the power to act on infringements committed within the territory of any of the Member States; (ii) that a Community trade mark court likewise has jurisdiction in respect of acts of infringement committed within the territory of one or more Member States, or even all the Member States, thus, its jurisdiction may extend to the entire European Union; and (iii) the exclusive right of a Community trade mark owner extends to the entirety of the European Union, throughout which Community trade marks enjoy uniform protection and have effect.
Based on such considerations, the Court of Justice ruled that the scope of the prohibition against further infringement of a Community trade mark issued by a Community trade mark court extends to the entire area of the European Union.
With reference to the second, third and fourth questions, the Court of Justice considered that a coercive measure, such as a periodic penalty payment, ordered by a Community trade mark court by application of its national law, in order to ensure compliance with a prohibition against further infringement, had effect in Member States (other than the Member State of that court) to which the territorial scope of such a prohibition extended, under the conditions laid down in Council Regulation (EC) No. 44/2001. Where the national law of one of those other Member States does not contain a coercive measure similar to that ordered by the Community trade mark court, the objective pursued by that measure must be attained by the competent court of that other Member State by having recourse to the relevant provisions of its national law to ensure that the prohibition is complied with in an equivalent manner.
This is an interesting development for EU law and will perhaps become a powerful tool in enforcing a brand’s unitary monopoly rights throughout the whole Union. In time, however, the decision will also highlight the lack of harmonization in the intellectual property rights enforcement regime throughout the EU. France has a relatively brand protective history, other jurisdictions less so