In relation to DHL Express France SAS v Chronopost SA, C- 235/09, the Court of Justice of the European Union (CJEU) has held that an injunction granted by a Community Trade Mark (CTM) court under the CTM Regulation (40/94/EEC, now replaced by 207/2009/EC) in one EU Member State has effect, in principle, throughout the European Union
Chronopost is the owner of a French trade mark and a CTM for WEBSHIPPING in respect of services relating to logistics and data transmission. DHL Express used the word WEBSHIPPING to designate its online-accessible express mail management service. Chronopost issued proceedings in France against DHL for infringement of both its French trade mark and its CTM. At first instance, the Tribunal de Grande Instance de Paris (Regional Court of Paris), which heard the case as a CTM court, found that DHL had infringed Chronopost’s trade marks and issued an injunction against DHL. It also imposed a financial penalty on DHL should it fail to comply with the injunction. The Court did not, however, grant Chronopost’s request that the effect of the injunction should be extended to the entire area of the European Union and restricted it to French territory only. DHL appealed to the Cour d’appel de Paris (the Paris Court of Appeal) and Chronopost appealed on the territorial scope of the injunction.
The appeal Court made a reference to the CJEU, requesting clarification as to the territorial scope of the injunction and the financial penalty imposed by the French Court.
The CJEU noted that a CTM has unitary character, providing the owner with protection against infringement across the whole of the European Union. Further, the objective of Article 98(1) of the 1994 CTM Regulation (which governs the sanctions a CTM court can impose on a finding of infringement or threatened infringement) is the uniform protection, throughout the entire European Union, of the right conferred by the CTM against the risk of infringement. In order to ensure that uniform protection, a prohibition against infringement therefore had to, as a rule, extend to the entire area of the European Union. If the territorial scope of that prohibition were limited to the territory of a particular Member State, there would be a risk that a defendant would begin to exploit the sign at issue again in another Member State. This would force the trade mark proprietor to bring separate judicial proceedings in each Member State concerned, which would lead to a risk of inconsistent decisions.
The CJEU acknowledged, however, that the territorial scope of a prohibition might in some circumstances be restricted. The exclusive right of a CTM owner is conferred in order to enable the proprietor to protect his specific interests in the trade mark. Accordingly, the exercise of that right is reserved to cases in which a third party’s use of the sign affects, or is liable to affect, the functions of the CTM. Where a CTM court held that the acts of infringement or threatened infringement are limited to a single or certain Member States, for example where the defendant proves that use of his allegedly infringing mark will not affect the functions of the claimant’s mark in other member states on linguistic grounds, then the court must limit the territorial scope of the injunction to exclude those member states.
The CJEU also held that any coercive measures ordered by a CTM court by application of its national law, such as a periodic penalty payment, must extend to the whole of the territory for which the injunction is granted. Where the national law of a Member State does not contain a coercive measure similar to that ordered by the CTM court, it must achieve enforcement in accordance with its own national laws.
The decision is significant as a contrary ruling would have meant that CTM owners would have had to pursue infringers in multiple EU Member States. However, there is still scope for difficulties concerning coercive measures, not least where a national court does not have the power to order a particular measure but needs to ensure that it is complied with in an equivalent manner.