That DHL case again ... again

For a case that the Court of Justice of the European Communities has yet to hear, Case C-235/09 DHL Express France SAS v Chronopost SA (noted by the IPKat here and later here) has generated a surprising degree of interest. This time, that interest comes via the IPKat's thoughtful friend Richard Ashmead, who writes:

"I have been talking to Katharine Stephens at Bird & Bird about this case and I am attaching, with her approval, a report prepared on the French litigation by Oceane Millon de La Verteville, a French Lawyer working with B&B in London.

It seems that the Tribunal de Grande Instance found the French registration valid and infringed but accepted that the CTM may be non-distinctive for example to an English speaker and to be invalid as a result. The Tribunal therefore deferred its decision on the CTM in order to allow consultation on the meaning of “shipping” in English, at Chronopost’s expense. This was not pursued and accordingly no injunction was granted by the Tribunal on the CTM.

The Tribunal seems therefore to have been functioning in its injunctive decision (and attached penalty order) solely with its French national court hat on, accepting that a finding of infringement of the CTM was not appropriate without consideration of the validity of the CTM under EU law. This sounds sound to me.

The appeal to the Cour d’Appel de Paris seems to have resulted in a finding of infringement of both the French and CTM registrations but, since validity on absolute grounds had only been determined from the French-speaking consumer’s point of view, no extension of the injunction etc to the whole EU could be made. That's a little more muddled, but it still seems sound to me.

On the remedy point, although the Cour de Cassation favoured the granting of remedies across the whole EU, it takes up in its ECJ reference those doubts as to the scope of remedies which seem actively to beset French CTM courts, even when only CTMs are involved.

I have not yet managed to satisfy myself that my reasoning stands up, but here goes for now:

- a CTM court has to consider infringement and validity of a CTM under EU law and,
if both infringement and validity are properly found, the CTM court’s remedies should as a result have effect throughout the entire area of the Community.

Note, though, the weasel-word “properly”.

This is an easier conclusion to reach on validity since, if the mark is invalid anywhere in the EU, it is invalid and the owner has recourse to conversion and further action under converted national rights.

I find unitary remedies, eg for mark-to-mark infringement, more difficult though. When the marks essentially identical, as here, we avoid for example linguistic complications on similarity of marks, but what about non-identical marks. Should third party use of an arguably similar mark in Germany be restrained by a Spanish CTM court when the evidence shows the marks only to be similar to a Spanish speaker? And should a German CTM court be obliged to restrain non-similar use in Germany because the mark are similar to a Spanish speaker?

Those doubts are evidently within or along the lines of the French courts’ concerns and a conclusion to take those into account is that:

- the remedies ordered by a CTM court properly finding both infringement and validity under EU law, on the issues and evidence before it, should apply EU-wide as a default, but that the court should retain a discretion to limit its ordered remedies within the EU eg to address issues of (non-)similarity of marks between different EU member states".

Thanks so much Richard, and indeed Katharine and Oceane, for contributing to this Kat's greater understanding of the anxieties and uncertainties leading to the making of this reference. He awaits the ruling with keen interest.