On a reference to the European Court of Justice (ECJ) for a preliminary ruling from the Cour de Cassation in France in DHL Express (France) v Chronopost SA [2010] C-235/09, Advocate General Pedro Cruz Villalón has opined that an injunction prohibiting an infringer of a Community Trade Mark (CTM) from continuing to infringe has effect throughout the whole of the European Union.

BACKGROUND

Chronopost issued proceedings for trade mark infringement against DHL Express (France) in the French courts, relying on its CTMs and French trade marks for WEBSHIPPING, covering services relating to the collection and delivery of mail. Chronopost acted when it discovered that DHL had used the word WEBSHIPPING in respect of an internet express mail management service.

The Tribunal de Grande Instance de Paris, acting as a CTM court, found that DHL had infringed Chronopost’s trade marks and prohibited DHL from continuing to infringe. It also imposed a financial penalty on DHL should it fail to comply with the injunction.

DHL appealed to the Cour de Cassation and Chronopost crossappealed, claiming that the injunction should apply across the European Union. The Cour de Cassation made a reference to the ECJ, requesting clarification as to the territorial scope of the injunction and financial penalties imposed by the French court.

OPINION

In the Advocate General’s opinion, given that the CTM Regulation (40/94/EC, now replaced by 207/2009/EC) confers jurisdiction on competent national courts to assess whether a trade mark has been infringed in one or more Member States and that, where CTMs are concerned, any declaration of infringement from the competent national court applies, in principle, across the European Union, any prohibition on that infringement must apply across the European Union as well. However, this should be limited to a specific geographical or linguistic area if the infringement is found by the competent national court concerned to apply only to that specific area.

As for the financial penalty imposed by the French Court, such coercive measures should also have effect across the whole territory to which the declaration of infringement and the injunction applies. Therefore, if it concerns infringement across the whole of the European Union, any financial penalty imposed on the infringer, should also apply across the whole of the European Union.

Financial penalties, such as those imposed by the French Court, constitute an enforcement measure and take place at a later stage. It would be a matter for the national courts to enforce the CTM court’s judgment. However, according to the Advocate General, national courts should be obliged to recognise the effects of the penalty imposed by the CTM court pursuant to the rules on jurisdiction and recognition set out in the Brussels Regulation (44/2001/EC). Therefore, if the enforcing court’s national law allows, it should simply impose the same penalty as imposed by the CTM court and, if national law does not allow, it should achieve enforcement in accordance with its own national provisions.

COMMENT

The ECJ’s press release states that the Advocate General had opined that, “in principle”, a declaration of infringement has effect throughout the entire area of the European Union where it relates to a CTM. The use of the words “in principle” acknowledges situations where this may not be the case, but the statement does not elaborate.

As for the enforcement of coercive measures, where a national court’s law does not allow the application of the same penalties as imposed by the CTM court, difficulties may well arise for that court in deciding how to achieve similar enforcement in accordance with its own laws. We await the ECJ to conclude their deliberations and give judgment.