Under the Community Trade Mark Regulation, trade mark protection extends throughout the whole of the EU. National courts can be designated as Community trade mark courts allowing them to rule on issues concerned with the EU trade marks system.
The ECJ has recently ruled that a decision by any Community trade mark court extends throughout the whole of the EU, and not just to the Member State in which the action was brought. Not only will this ensure that a uniform approach to trade mark protection is taken throughout the EU, but it also means that Community trade mark owners will not be forced to take separate actions against infringers in several Member States, thus reducing both cost and time.
However, the ECJ stated that there may be occasions where acts of infringement or threatened infringement of a Community trade mark are limited to a single Member State or to only part of the EU. The ECJ outlined two examples of when this might occur:
- where the applicant has explicitly restricted the territorial scope of its application; or
- where the defendant proves that the use of the trade mark does not or is not liable to affect the functions of the trade mark, for example, on linguistic grounds.
Where a Community trade mark court has ordered an infringer to pay penalties then these will also usually apply throughout the EU. However, where a Member State does not have laws allowing for such penalties as ordered they must find a way within their national laws to ensure that the prohibition originally issued by the Community trade mark court is complied with by an equivalent method.
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