National courts: speaking with one voice?
The regulation establishes the system whereby trademark protection may be established across the European Union.
In a decision handed down on April 12, 2011, the European Court of Justice considered (1) the unitary character of the Community trademark and (2) the coercive measures imposed by a Community trademark court and how those coercive measures may be enforced in another member state where the courts of the other member states do not have the same powers of enforcement as the original court.
Background
In DHL Express France SAS v Chronopost SA, Chronopost was the proprietor of both French and Community trademarks for the sign ‘Webshipping’ in respect to logistics and data transmission, telecommunications, transport by road, collecting mail and express mail management. The Court of Appeal in Paris found that use of the sign Webshipping to designate an express mail management service infringed national and Community trademarks.
The court made an order restraining the use of the sign and requiring DHL to pay periodic penalties should the infringement be repeated—under French law.
The court was silent on whether it extended to the entire Community or only France; Chronopost appealed to the French Cour de Cassation, which then referred questions to the European Court of Justice, including: did the order extend to the entire area of the European Union, or only France, and are coercive measures (in this case a financial penalty payable by DHL for continued infringement) imposed by the national law of the member state applicable in other member states where the order has force?
Unitary character of Community trademarks
There was no question of the unitary character of Community trademarks established by the regulation or the extent of protection available under the regulation arising from that unitary character. Article 1 of the regulation states: “[A Community trademark] […] shall have equal effect throughout the Community […] it shall not be registered, transferred or surrendered […] save in respect to the whole Community.”
The ECJ went on to decide that it was consistent with the objectives of the regulation that uniform protection applies across the Community, regardless of the Community trademark court imposing the remedy. The general rule applied that decisions of Community trademark courts extend to the entire EU and not simply the jurisdiction of the national court.
Limits to protection
National courts acting as Community trademark courts may have their own local jurisdictional limitations. They are nonetheless empowered to hear trademark disputes for one or more member states, or disputes extending over the entire EU. If, however, the proprietor limits its action to particular territories or the linguistic or conceptual interpretation of the trademark in suit does not affect the functions of the trademark, the court must limit any remedy granted accordingly.
For instance, if a Community trademark is descriptive in one or more of member states, it may receive limited protection in an action for infringement. It is for the defendant to raise such limitations prior to judgment, and not after an order has been made.
Mirroring prohibitions across member states
Consequently, a Community trademark court seised of a Community trademark dispute is at liberty to select such measures as are available under its national law to enforce judgments. Prohibitions may be enforced by recognition of the judgment by virtue of Article 33(1) of Council Regulation (EC) No. 44/2001. But national courts may have powers specific to their jurisdiction. In Chronopost, the court had the power to impose periodic penalty payments upon defendants for continuing infringement—a remedy unknown to English law.
In these circumstances, the ECJ held that the courts of other member states should discharge their jurisdiction to “attain the objective pursued by the [coercive] 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”. The end is compliance with the prohibition imposed by the original court rather than assimilating the relief for breach of the prohibition.
In circumstances where the national law of another member state cannot impose the relief ordered by the original court, it is open to the court to select from its own law measures to enforce the original prohibition. Lastly, although the Community trademark court may not technically have jurisdiction over the entire EU, the judgment of the national court acting as a Community trademark court may be enforced by virtue of Article 33(1), effectively giving the relevant court jurisdiction on a pan- European basis.
