INTELLECTUAL PROPERTY : ECJ RULES ON NATIONAL PROHIBITION OF TRADE MARK INFRINGEMENTS.

A prohibition issued by a national court hearing a case as a Community trade mark court extends as a rule to the entire European Union. Similarly, measures taken to guarantee such a prohibition, such as a penalty payment, also have effects throughout the Union. This is the gist of the ruling handed down, on 12 April, by the EU Court of Justice in a case pitting the French firm Chronopost against DHL Express France SAS (Case C-235/09).

To ensure uniform protection of Community trade marks registered by companies in the framework of Regulation (EC) 40/94, member states designate Community trade mark courts' that have jurisdiction for infringement cases.

Chronopost SA owns the Community and French trade marks WEBSHIPPING', applied for in 2000 and registered in respect of, among others, services relating to logistics and data transmission, as well as mail distribution. DHL Express France has used this same term to designate an internet-based express mail management service. In 2006, the Regional Court of Paris, France - acting as a Community trade mark court - ruled that DHL Express France had infringed the French trade mark WEBSHIPPING but did not rule on the infringement of the Community mark. Chronopost appealed and the Paris Court of Appeal upheld the decision, in 2007, but did not extend the effects of the prohibition to the Union as a whole, thus limiting the effects of the prohibition to French territory. Chronopost appealed the territorial limitation of the prohibition and of the penalty payment to the Court of Cassation, which referred the matter to the EU Court of Justice.

The court held first that the regulation must be interpreted as meaning that a prohibition ordered by a national court acting in its capacity as a Community trade mark court extends as a rule to the entire area of the European Union. A trade mark court has jurisdiction for trade mark infringements in the territory of any member state. Its jurisdiction therefore extends as a rule to the entire European Union. Furthermore, the exclusive right of a Community trade mark proprietor also extends as a rule to the entire Union. However, if a Community trade mark court rules that the infringement is limited to a single member state or part of EU territory, it must limit the scope of the prohibition ordered.

Second, the court held that a coercive measure ordered by a Community trade mark court by application of its national law also has effect in member states other than the member state of the court. Such measures can only be effective if they have an effect in the same territory as that in which the prohibition order itself has effect.

The judgement is available atwww.europolitics.info > Search = 291975