If your Community trademark is infringed or is threatened to be infringed, a Community trade mark court can issue an order prohibiting the defendant from proceeding with such acts.
In a French national case the issue raised whether a prohibition against further infringement or threatened infringement issued by a Community trade mark court has effect as a matter of law throughout the entire area of the European Union. Because the answer to this question necessitated an interpretation of applicable EU law, the French Cour de Cassation sought the assistance of the EU Court of Justice, which delivered its answer on 12 April 2011 (Case C-235/09, DHL Express France SAS / Chronopost SA).
The Court of Justice replies that “a prohibition against further infringement or threatened infringement issued by a competent Community trade mark court must …, as a rule, extend to the entire area of the European Union”. In reaching its conclusion, the Court underlines that in respect of acts of (threatened) infringement of a Community trade mark a Community trade mark court can have jurisdiction in the entire area of the European Union. Moreover, a Community trade mark is to have a unitary character. In another case the Court of Justice explained that the objective of applicable EU law is the “uniform protection, throughout the entire area of the European Union, of the right conferred by the Community trade mark against the risk of infringement”.
The Court of Justice has explicitly written down the reasons for excluding the possibility to limit, as a principle, the territorial scope of a prohibition to the territory of the Member State in which a Community trade mark Court has found there to be an act of infringement or threatened infringement or to the Member States which gave rise to such a finding. First, such a limitation would risk that the defendant begins to exploit the sign at issue afresh in a Member State for which the prohibition had not been issued. Second, a Community trade mark proprietor would be compelled to bring new judicial proceedings in those Member States where new acts of infringement are committed. These new judicial proceedings, according to the Court of Justice, would increase the risk of inconsistent decisions because of the factual assessment of the likelihood of confusion. This inconsistency would run counter of the objective of a uniform protection of a Community trade mark.
Nevertheless, the Court of Justice has also stated that the territorial scope of the prohibition can, in certain circumstances, be restricted. After all, so the Court explains, a Community trade mark protection is only conferred to enable the proprietor to protect his specific interests, i.e., that the trade mark is able to fulfil its functions. As a consequence, the territorial scope of the trade mark can not extend beyond what the trade mark right allows its proprietor to do in order to protect his trade mark, i.e., prohibiting uses which are liable to affect the functions of the trade mark. On the contrary, when such acts do not affect the functions of the Community trade mark, trade mark protection can not prohibit such acts. More in particular, the Court of Justice has added, if “the acts of infringement or threatened infringement of a Community trade mark are limited to a single Member State or to part of the territory of the European Union […] that court [i.e. a Community trade mark court hearing the case] must limit the territorial scope of the prohibition which it issues”.
This leaves the question when an infringement act can or should be considered to be limited to a single Member State or to part of the EU territory. The Court of Justice enumerates two circumstances where the Community trade mark court could find this is the case. First, if the applicant for a prohibition order has restricted the territorial scope of its action in exercising its freedom to determine the extent of that action. Second, if the defendant proves that the use of the sign at issue does not affect or is not liable to affect the functions of the trade mark, for example on linguistic grounds.
If the Community trade mark court finds a trade mark infringement that extends to several Member States (or even the entire EU), it can impose coercive measures such as periodic penalty payments. These measures aim to ensure compliance with a prohibition against further infringement or threatened infringement which has been issued by that trade mark court. Do such measures also have effect in those Member States to which the territorial scope of the prohibition extends (other than the Member State of that court)? Also this question has been referred to the Court of Justice.
The Court of Justice answered that a court of a Member State other than that of the court which ordered the measure seized to give effect to that measure must, under the provisions of Chapter III of Regulation 44/2001, recognise and enforce that measure in accordance with the rules and procedures laid down by the national law of that Member State.
In addition, the Court of Justice has clarified the role of a national court in case the national legislation of the Member State in which recognition and enforcement is sought does not provide for such a coercive measure. In such a case, the national court must “attain the objective pursued by the measure by having recourse to the relevant provisions of its national law which are such as to ensure that the prohibition originally issued is complied with in an equivalent manner”.
