The Court of Justice of the European Union (EU) (the CJEU) held that injunctive relief and related coercive measures, such as payment penalties, under the Community Trademark Regulation (40/94/EEC, now replaced by 207/2009/EC) granted by a national court of one member state has effect, in principle, throughout the EU. DHL Express France SAS v. Chronopost SA, Case C-235/09 (CJEU, Apr. 12, 2011).
Chronopost SA owned French and Community trademarks for "WEBSHIPPING" for services relating to: logistics and data transmission; telecommunications; transport abroad; collecting mail, newspaper and parcels; and express mail management. Chronopost filed a lawsuit against DHL Express (France) SAS (DHL) before the Tribunal de Grande Instance de Paris for infringement of its French and Community trademarks. Chronopost claimed infringement based on DHL’s use of the words "WEBSHIPPING" and "WEB SHIPPING" for its Internet-based express mail management service.
The Community trademark court issued an injunction against DHL, as well as coercive measures and potential financial penalties, should DHL fail to comply with the injunction. The court declined, however, to grant Chronopost’s request that the injunction be extended to the entire EU. Instead, it restricted the scope of the injunction and related coercive measures to France. DHL appealed the result while Chronopost appealed the limitation of the scope of the prohibition and potential penalties to France. The appeals court in France referred the matter to the CJEU for a preliminary ruling on the proper territorial scope of a prohibition issued by a Community trademark court and related coercive measures.
The CJEU held that a prohibition against further infringement or threatened infringement issued by a competent Community trademark court, such as the court hearing this case, must, as a rule, extend to the entire area of the EU. In reaching this conclusion, the court noted that a Community trademark has a unitary character that ensures its owner protection against infringement across the EU. It further noted that the objective of Article 98(1) (the relevant regulation in this case governing the sanctions a Community trademark court may impose on a finding of infringement or threatened infringement) is the uniform protection, throughout the entire EU, of a Community trademark owner’s rights. Thus, in order to ensure uniform protection of Community trademarks, a prohibition against infringement or threatened infringement must extend to throughout the EU.
However, the CJEU did acknowledge that the territorial scope of a prohibition might be limited in certain circumstances. In particular, the prohibition against infringement or threatened infringement may be limited if a Community trademark court holds that the acts of infringement or threatened infringement are limited to a single member state or certain member states, for example, if the defendant proves that use of the infringing mark will not affect the functions of the Community trademark on linguistic grounds. In that case, the Community trademark court must limit the territorial scope of the injunction.
Finally, the CJEU also held that any coercive measures ordered by the Community trademark court under its national law, such as the penalty payments ordered by the original court in Paris in this case, must extend to the whole territory in which the injunctive relief applies. Where the national law of a member state does not contain a coercive measure similar to that ordered by the Community trademark court, the CJEU held that the national court must achieve the enforcement goal in an equivalent manner by application of its own national laws.
This decision ensures that Community trademark owners may effectively enforce their trademark rights throughout the EU through one proceeding before a Community trademark court. Otherwise, Community trademark owners would have had to pursue infringers in multiple proceedings throughout the EU. This result does not, unfortunately, resolve the potential enforcement difficulties that may result when a Community trademark owner seeks to enforce the coercive measures ordered by one national court in a national court in a different member state that does not have the ability to order the same coercive measures originally ordered. It does at least provide a basis for the Community trademark owner to seek enforcement of the injunctive relief through whatever measures might be available under national law in the member state to ensure the infringer’s compliance with the original Community trademark court’s injunctive relief.