International Commercial Law Blog

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

In its Judgment in Case C-235/09 DHL Express France SAS v Chronopost SA the European Court of Justice ruled that the Council Regulation (EC) No 40/94 of 20 December 1993 on the Community Trade Mark (the Regulation) creates Community arrangements for trademarks whereby undertakings may obtain Community trademarks to which uniform protection is given and which produce their effects throughout the entire area of the European Union.

In order to ensure that protection, the Regulation provides that Member States are to designate in their territories “Community trademark courts” having jurisdiction for infringement actions and, if they are permitted under national law, actions in respect of threatened infringement relating to Community trademarks. Where a Community trademark court finds that a defendant has infringed or threatened to infringe a Community trademark, it is to issue an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the Community trademark. It is also to take such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with.

In relation to this, the Court ruled that Article 98(1) of the Regulation shall be interpreted as meaning that the scope of the prohibition against further infringement or threatened infringement of a Community trade mark, issued by a Community trademark court whose jurisdiction is based on Articles 93(1) to (4) and 94(1) of the Regulation, extends, as a rule, to the entire area of the European Union.

Furthermore, Article 98(1), second sentence, of the Regulation No 40/94, shall be interpreted as meaning that a coercive measure, such as a periodic penalty payment, ordered by a Community trademark court by application of its national law, in order to ensure compliance with a prohibition against further infringement or threatened infringement which it has issued, has effect in Member States to which the territorial scope of such a prohibition extends other than the Member State of that court, under the conditions laid down, in Chapter III of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, with regard to the recognition and enforcement of judgments.

Where the national law of one of those other Member States does not contain a coercive measure similar to that ordered by the Community trademark court, the objective pursued by that measure must be attained by the competent court of that other Member State by having recourse to the relevant provisions of its national law which are such as to ensure that the prohibition is complied with in an equivalent manner.

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