Advocate General of the Court of Justice of the European Union, Opinion of 7 October 2010, C-235/09, DHL Express (France) SAS v. Chronopost SA

Advocate General Cruz Villalón held that, in general, a prohibition issued by a national court against the infringing use of a registered Community trademark has effect as a matter of law throughout the entire area of the European Union. A territorial limitation only exists where the infringement or the action following the infringement is limited to a specific geographical or linguistic area.

Chronopost, the owner of the French and Community trademarks "WEBSHIPPING" designating services for mail delivery, filed a lawsuit against DHL Express (France) SAS (DHL) before the Tribunal de Grande Instance de Paris for infringement of its trademarks. DHL used the words "WEBSHIPPING" and "WEB SHIPPING" for its internet based express mail management service without Chronopost's permission.

The court, acting as a Community trademark court, imposed an injunction against DHL as well as coercive measures, in particular a financial penalty, in case DHL failed to comply with the injunction. DHL appealed to the Cour de Cassation. Chronopost cross-appealed, claiming that the effects of the prohibition and the periodic penalty payment had been limited to French territory. The Cour de Cassation made reference to the Court of Justice of the European Union for a preliminary ruling in order to ascertain the territorial scope of the prohibition issued by a Community trademark court and of the coercive measures adopted in order to ensure that such prohibition was complied with.

The Advocate General first examined the territorial scope of the prohibition of a Community trademark court, and, second, discussed the scope of the coercive measures.

As to the territorial scope of a prohibition of a Community trademark court, the Advocate General held that a prohibition issued by a national court, acting as a Community trademark court, had, in general, effect throughout the whole Community unless it was explicitly limited by the circumstances of the case. It followed from article 102 of the Community Trademark Regulation (which provides a unitary legal system with a corresponding unitary protection for Community trademarks) that the scope of an infringement claim extends to the entire European Union.

As to the coercive measures, the Advocate General highlighted that these had the same territorial scope as the corresponding prohibition. Owing to the punitive character of these measures, the court of the Member State in which an infringement of the prohibition occurred was competent for the setting and enforcement of such measures according to national law. If its national law permits (Brussels I Regulation), the court simply had to recognize the order of the Community trademark court and to apply the financial penalty. If its national law did not provide for such measures, the court had to enforce the order in accordance with its national provisions to uphold the unitary protective system also with respect to coercive measures.

The Advocate General's opinion is not binding on the Court of Justice of the European Union