AG opinion in WEBSHIPPING case benefits CTM owners

European Union
In DHL Express (France) SAS v Chronopost SA (Case C-235/09, October 7 2010), Advocate General Cruz Villalón has delivered a much-anticipated opinion in a case regarding the pan-European effect of a ruling by a Community trademark (CTM) court and its enforcement.

Chronopost SA is the owner of a CTM registration for WEBSHIPPING. The registration covers, among other things, services for the collection and delivery of mail. DHL Express (France) SAS started using the terms 'web shipping' and 'webshipping' for an online express mail management service. In November 2007 the Tribunal de Grande Instance de Paris, acting as a CTM court, decided that DHL was infringing Chronopost’s CTM and prohibited DHL, under penalty of a fine, from continuing the infringement. DHL appealed.

The Cour d’Appel de Paris upheld the decision of the Tribunal de Grande Instance. However, it rejected Chronopost’s request to extend the injunction to the territory of the European Union, limiting the geographical scope of the decision to France. On further appeal by both parties, the Cour de Cassation rejected DHL's appeal, confirming the decisions of the lower instances in relation to trademark infringement. However, with respect to Chronopost’s cross-appeal (which contested the limitation of the ruling to the French territory), the court referred questions to the European Court of Justice (ECJ) for a preliminary ruling, seeking to ascertain, in essence, the territorial scope of:
The proceedings before the ECJ concerned the interpretation of Article 98 of the Community Trademark Regulation (40/94). However, the ruling will also be applicable to the interpretation of Article 102 of the Community Trademark Regulation (207/2009) (ie, the Community Trademark Regulation as it is in force at the time of writing). Article 102(1) of the regulation provides that, if a CTM court finds that the defendant has infringed or threatened to infringe a CTM, it shall, unless there are special reasons for not doing so, issue an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the CTM. The court shall also take such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with. Article 102(2) provides that, in all other respects, the CTM court shall apply the law of the member state in which the acts of infringement or threatened infringement were committed, including the private international law.

In his opinion, Advocate General Cruz Villalón considered the complex interplay between the provisions of the Community Trademark Regulation itself, the Brussels Regulation and the national laws of the member states. The advocate general crucially differentiated between:
  • the infringement proceedings, including the injunction prohibiting the infringing act and the coercive measures adopted in order to ensure that the prohibition is complied with; and
  • the enforcement of the orders.
In recognising the unitary character of the CTM, Advocate General Cruz Villalón stressed that an injunction prohibiting an infringing act issued by a competent CTM court has, in principle, pan-European effect. The court’s order may be limited to specific territories, as opposed to a Community-wide relief, only where the infringement or action for infringement is limited to a specific geographical or linguistic area.

In the advocate general’s opinion, the injunction itself and the coercive measures adopted in order to ensure that the prohibition is complied with are closely connected. As a consequence, the advocate general considered that it is within the jurisdiction of the CTM court to order the coercive measures together with the injunction, and that this order has again pan-European effect (or is limited to specific territories parallel to the injunction).

The advocate general took into account the fact that coercive measures may vary between the member states. By way of example, threatening to impose penalty payments in order to ensure compliance with the injunctive relief is known in many jurisdictions in mainland Europe, while English law recognises the failure to comply with a court order as a contempt of court. Irrespective of these differences, the advocate general suggested that it is for the CTM court hearing the infringement case to order the coercive measures according to its national law.

When it comes to the enforcement of the injunction, the court of the member state in which the defendant does not comply with the injunction must recognise the effects of the coercive measures imposed by the CTM court of the other member state, in accordance with the rules on recognition laid down by the Brussels I Regulation. Such measures must be, according to the advocate general, adjusted to the specific features of each legal system. Thus, the court of the member state in which the injunction has been infringed must simply recognise the order and apply the coercive measure (eg, the penalty payment) to the specific case - if its national law so permits. By contrast, if its national law does not provide for such a measure, it must achieve enforcement in accordance with its own national provisions.

The advocate general’s opinion, if adopted by the ECJ, would once again strengthen the CTM. This opinion will thus be applauded not only by Chronopost (which can be confident that the Cour de Cassation will rule in its favour if the ECJ follows Cruz Villalón’s guidance), but also by CTM proprietors in general. The court's emphasis on the primacy of Community law and the need for a uniform approach to the interpretation of the Community Trademark Regulation will reassure CTM owners seeking to enforce their rights against infringers that not only an injunction, but also the enforcement measures, will have pan-European effect.

Florian Traub, Hammonds LLP, London

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