An order of a competent national court prohibiting an infringer from continuing to use a registered Community trade mark has, in principle, effect throughout the entire area of the European Union
The Community trade mark regulation1 provides for a uniform intellectual property right effective throughout the entire area of the European Union and, for the purposes of protecting that right, establishes a two-tier system of specialised jurisdiction. On the one hand, the Office for Harmonisation in the Internal Market (OHIM), from whose decisions an appeal may lie to the General Court and, ultimately, the Court of Justice, decides disputes between private parties and the administration responsible for registering Community trade marks. On the other hand, the ‘Community trade mark courts’, a limited number of national courts of first and second instance designated by each Member State, decide disputes between private parties. In the context of that system, the national courts act as special courts of the European Union.
In accordance with the Regulation, where Community trade mark courts find infringement or threatened infringement of a Community trade mark, they are to issue an order prohibiting the infringer from proceeding with the acts which infringed or would infringe the Community trade mark. They may also take such measures in accordance with their national law as are aimed at ensuring that that prohibition is complied with.
Chronopost SA is the proprietor of the French and Community trade marks ‘WEBSHIPPING’ relating, in particular, to services for the collection and delivery of mail. After those marks had been registered, DHL Express (France) SAS used the same word to designate an express mail management service accessible principally via the internet. In 2007, the Tribunal de Grande Instance de Paris (Regional Court, Paris), acting as a Community trade mark court, declared that there had been trade-mark infringement, prohibited DHL from proceeding with the acts constituting the infringement, and imposed a periodic penalty payment on it, that is to say, a financial penalty should it fail to comply with the prohibition.
At last instance, DHL brought an appeal in cassation before the Cour de Cassation (Court of Cassation, France). Chronopost, for its part, lodged a cross-appeal contesting the fact that the effects of the prohibition and the periodic penalty payment had been limited to French territory. In that context, the Cour de Cassation made a reference to the Court of Justice for a preliminary ruling in order to ascertain, in essence, the territorial scope of the prohibition issued by a Community trade mark court and of the coercive measures adopted in order to ensure that that prohibition is complied with.