Brussels, 12/04/2011 (Agence Europe) - A prohibition against infringement, issued by a national court sitting as a Community trademark court, extends, as a rule, to the entire area of the European Union.
This the ruling issued on 12 April in Case C-235/09, in which the European Court of Justice interpreted EU Regulation 40/94/EC on the Community trademark, as requested by the French appeals court for a complaint lodged by Chronopost SA against DHL Express France SAS over alleged abuse by DHL of the French and Community trademark WEBSHIPPING, registered by Chronopost in 2000. The French appeals court upheld a ruling by another court, the Tribunal de Grande Instance de Paris, that DHL Express France had had infringed the French trademark WEBSHIPPING, although it did not adjudicate upon the infringement of the Community trademark and prohibited DHL, subject to a periodic penalty payment in the event of infringement of the prohibition, from continuing to use the signs WEBSHIPPING and WEB SHIPPING even though the effects of the prohibition were restricted to France alone. Chronopost appealed against the geographical restriction and the French appeals court quizzed the European Court of Justice about the geographical restrictions on court decisions about Community trademarks.
The European Court of Justice ruled that the regulation must be interpreted as meaning that a prohibition issued by a national court, hearing a case as a Community trademark court, extends, as a rule, to the entire area of the European Union because: - the territorial jurisdiction of the trade-mark court is an exclusive one to adjudicate upon all infringement actions and the court therefore has jurisdiction in respect of acts of infringement within the territory of any of the member states and its jurisdiction extends, as a rule, to the entire European Union; and - the exclusive right of a Community trademark proprietor extends, as a rule, to the entire area of the European Union, throughout which Community trademarks enjoy uniform protection and have effect.
Therefore, and in order to ensure uniform respect of bans across the EU, along with protection for trademark holders, coercive measures penalising counterfeiting that are issued by a trademark court in a member state in application of the law of that country must also apply to other member states. Thus, in order to ensure that the prohibition is complied with, when a court of a member state where the prohibition was infringed is seized, it must recognise and enforce the decision coupled with coercive measures, in accordance with the rules and procedures laid down by its national law. Where the law of a member state does not provide for coercive measures similar to those ordered by the trademark court of another member state which issued the prohibition, the court seized must achieve enforcement by having recourse to the relevant provisions of its national law so as to ensure that the prohibition originally issued is complied with in an equivalent manner. (F.G./transl.fl)