Court of Justice of the EU rules that injunctions granted by Community trade mark courts should have pan-Europe effect
The Court of Justice of the European Union ("CJEU") has confirmed that injunctions granted by national courts based on Community trade mark ("CTM") rights will, as a general rule, automatically have effect throughout the entire area of the EU. Moreover, where an order is also made to encourage compliance with the injunction (known as "coercive measures"), national courts in other EU member states must apply those measures or seek to attain the same outcome through equivalent measures available under national law.
A Community trade mark ("CTM") registration provides trade mark protection in all 27 EU member states. The rules governing CTMs are contained in the Community Trade Mark Regulation 207/2009 (which has codified and replaced the previous Regulation 40/94) ("CTMR"). Under the CTMR, EU member states must designate certain of their national courts as CTM courts, which can decide questions of infringement and validity of CTMs.
The application of the CTMR has recently been considered by the CJEU following a request made by the French Cour de Cassation for clarification of the scope of injunctions and coercive measures issued by CTM courts (DHL Express France SAS v Chronopost SA Case C-235/09).
In the French action, Chronopost, the proprietor of French and Community trade mark registrations for WEBSHIPPING, sued its competitor, DHL, for infringement when DHL used that mark for its express mail management service. At first instance the French court found infringement of the French trade mark but did not adjudicate on infringement of the CTM. The Court of Appeal in Paris, acting as a CTM court, found infringement of both the French and Community trade marks and issued an injunction prohibiting DHL from continuing to use the sign WEBSHIPPING for its express mail management service, subject to a periodic penalty payment in the event of infringement of the injunction. Chronopost appealed this decision to the French Cour de Cassation submitting that the injunction issued by the Court of Appeal should extend to the entire area of the EU.
The Cour de Cassation issued a reference to the CJEU seeking guidance on the interpretation of the CTMR. In particular, the Cour de Cassation wanted to know whether (i) an injunction issued by a CTM court has effect throughout the entire area of the EU, and (ii) a coercive measure ordered by a CTM court to ensure compliance with an injunction can have effect in member states other than that in which the injunction was granted.
Injunction issued by a CTM court has effect throughout entire area of EU
The CJEU has confirmed that, in order to ensure the uniform character of a CTM throughout the EU, provided that certain jurisdictional conditions laid down under the CTMR are met (currently set out in Article 97(1) - (4) CTMR 207/2009), an injunction issued by a competent CTM court must extend to the entire area of the EU, and other member states are required to recognise and enforce the judgment to give it a cross-border effect.
However, the CJEU noted that the territorial scope of the injunction may be restricted if the acts or threatened acts of a defendant do not affect the functions of a CTM, or if the claimant sets a territorial restriction on its application for injunctive relief. The CJEU gave an example of when a CTM court must limit the territorial scope of the injunction where the defendant proves that use of the sign does not affect or is not liable to affect the functions of the trade mark on linguistic grounds. It is likely that a reference to the CJEU will be needed to establish whether a pan-European injunction will automatically arise in other scenarios, such as where the CTM has a reputation under Article 9(1)(c) CTMR in only some, rather than all, EU member states.
Coercive measures have effect in other member states
As for the second issue on which guidance was sought, the CJEU ruled that a court of another member state must recognise and enforce a coercive measure ordered by the CTM court in order to ensure compliance with the injunction.
Even where the national law of a member state in which recognition and enforcement of the CTM court decision is sought does not provide for a coercive measure similar to that ordered by the CTM court, the CJEU has ruled that member states must ensure that the objective of the measure is achieved in an equivalent manner under provisions in their national laws. For example, in this case, the French court had ordered payment of a periodic penalty in the event of non-compliance with the injunction. Such period penalties are not awarded by the courts of England and Wales. However, a comparable measure could be achieved by contempt proceedings being brought against a non-compliant defendant, and a fine being imposed by the English court for failure to comply with the terms of the injunction ordered by a CTM court from another jurisdiction.
|In practice: Following the CJEU's judgment, an injunction by a CTM court will as a rule be automatically effective throughout the EU, although it may be restricted in particular cases (e.g. if the claimant only brings an action in respect of certain member states). Defendants should, therefore, give careful consideration at an early stage as to whether and on what basis they should seek territorial restrictions on injunctions based on CTM rights. Also, where the CTM court makes particular enforcement provisions pursuant to the injunction (e.g. in this case a periodic penalty payment), courts in other member states have to enforce the same provisions, if available in their national law, or enforce comparable provisions to bring about the same overall objective.|
- Subject to the provisions of this Regulation as well as to any provisions of Regulation (EC) No 44/2001 applicable by virtue of Article 94, proceedings in respect of the actions and claims referred to in Article 96 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment.
- If the defendant is neither domiciled nor has an establishment in any of the Member States, such proceedings shall be brought in the courts of the Member State in which the plaintiff is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment.
- If neither the defendant nor the plaintiff is so domiciled or has such an establishment, such proceedings shall be brought in the courts of the Member State where the Office has its seat.
- Notwithstanding the provisions of paragraphs 1, 2 and 3:
- (a) Article 23 of Regulation (EC) No 44/2001 shall apply if the parties agree that a different Community trade mark court shall have jurisdiction;
- (b) Article 24 of Regulation (EC) No 44/2001 shall apply if the defendant enters an appearance before a different Community trade mark court.
- Proceedings in respect of the actions and claims referred to in Article 96, with the exception of actions for a declaration of non-infringement of a Community trade mark, may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened, or in which an act within the meaning of Article 9(3), second sentence, has been committed.