Questions referred to ECJ as to scope of prohibition measures

In DHL Express France v Chronopost (June 23 2009), the French Supreme Court has referred a number of questions to the European Court of Justice (ECJ) for a preliminary ruling.
Chronopost has held French and Community trademark (CTM) registrations for the term 'webshipping' since 2000. The mark covers a range of services in relation to logistics and the transmission of information.
DHL Express France later started to use the terms 'web shipping' and 'webshipping' for mail management services (especially on the Internet). Chronopost thus sued DHL for trademark infringement. The Court of First Instance and, subsequently, the Court of Appeal found for Chronopost and enjoined DHL from continuing the infringing acts in France, subject to a penalty for failure to execute. Both DHL and Chronopost appealed to the Supreme Court.
Before the Supreme Court, DHL argued that the Court of Appeal should have considered whether, at the time the alleged infringement started, the term 'webshipping' was usual in trade and indicated the nature and characteristics of online shipping services. The Supreme Court agreed with the Court of Appeal that, at the relevant time, the French public did not understand the meaning of the English word 'shipping'. DHL's argument was thus rejected. 
In addition, Chronopost argued that the prohibition should apply across the whole of the European Union, and not only to France. In support of its argument, Chronopost relied on:
  • the unitary character of CTMs; and
  • the fact that the Court of Appeal acted as a second instance Community Trademark Court.
The Supreme Court pointed out that although the Community Trademark Regulation (40/94) defines the protection of CTMs, enforcement is handled at a national level. It also stated that if the prohibition applied to the whole of the European Union, it would thus concern national territories where the acts of infringement had not yet been committed - or even threatened to be committed.  
Due to the reasonable doubt involved, the Supreme Court stayed the proceedings and referred the following questions to the ECJ:
  • Should the provisions of the regulation be interpreted as meaning that a prohibition issued by a Community Trademark Court has effect as a matter of law throughout the whole of the European Union?  
  • If not, is that courtentitled to limit that prohibition to the territories of the member states in which the acts of infringement have been committed or threatened to be committed?
  • In either case, are the coercive measures which the court has attached to the prohibition by application of its national law applicable within the territories of the member states in which that prohibition would have effect?
  • In the contrary case, is that court entitled to order such coercive measures - similar to or different from those adopted pursuant to its national law - by application of the national laws of the member states in which that prohibition would have effect?
These questions are of great interest from a procedural point of view. In particular, should the ECJ rule that such prohibition does not automatically apply across the whole of the European Union, the issue will then be whether a plaintiff should specifically request that the court issue an EU-wide prohibition.
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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