On 7th October 2010 Advocate General Cruz Villalón delivered his opinion in DHL Express (France) SAS v Chronopost SA (Case C-235/09). The case was brought before the Court of Justice of the European Union (ECJ) by the French Court of Cassation, which requested a preliminary ruling to ascertain the territorial scope of a prohibition order issued by a national Community trademark court and the coercive measures to be implemented in order to ensure compliance with such prohibition.
Article 98 of the EU Community Trademark Regulation (40/94/EC) gives a national Community trademark court the power to issue a prohibition order regarding an infringing trademark. The advocate general considered that a prohibition originating from a national Community trademark court was effective throughout the entire European Union, as the Community trademark courts are considered to be specific jurisdictions of the European Union, integrated into the judicial system of the member states.
Therefore, an infringement action brought before a single national Community trademark court may result in a prohibition order that is enforceable beyond national boundaries throughout the territory where infringement takes place.
Moreover, according to the advocate general’s opinion, the coercive measures set down in the Community trademark court order have a similar territorial effectiveness. However, coercive measures must be adjusted to the specific features of each national legal system.
If the ECJ shares the advocate general’s viewpoints, this will have a positive impact on trademark enforcement within the European Union.
This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.