That DHL case again

The IPKat is grateful to his readers for providing him with further information on the reference to the European Court of Justice by the Cour de Cassation, France, of Case C-235/09 DHL Express France SAS v Chronopost SA (noted by a very tired Kat at the end of a long day here). Ian Starr (Ashurst) lived up to his name by sending this link to an explanatory note on the UK's IPO website [nb after posting this item, the Kat checked his emails and found that Graeme Murray had also kindly sent him this]:

"French Republic v DHL Express France [Now that's a surprise -- the referred case appears to have changed its name]

Chronopost are the proprietors of French and Community trade marks “Webshipping” both of which were applied for in 2000. Chronopost brought proceedings for infringement against DHL and the Community court, having found the infringement to have been committed, issued a prohibition from proceeding with the acts complained of and attached a periodic penalty to the prohibition.

In an application before the Cour [historical note: this is the first time the IPKat has corrected anyone's French] d’Appel, Chronopost sought to have the periodic penalty payment extended to the entire area of the European Community. The court, however, expressly indicated in its judgment that prohibition subject to a periodic penalty payment, applied only to French territory.

Chronopost, however, contend that because a Community trade mark has a unitary character, it must be given protection throughout the entire area of the Community and that by limiting the prohibition to France, the Cour d’Appel infringed Articles 1 and 98 of Regulation (EC) 40/94".

For the record, Article 1(2) states:

"2. A Community trade mark shall have a unitary character. It shall have equal effect throughout the Community: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its use be prohibited, save in respect of the whole Community. This principle shall apply unless otherwise provided in this Regulation".

Article 98 ("Sanctions") adds:

"1. Where a Community trade mark court finds that the defendant has infringed or threatened toinfringe a Community trade mark, 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 Community trade mark. It shall also take such measures in accordance with its national law as are aimed at ensuring that this prohibition is complied with.

2. In all other respects the Community trade mark court shall apply the law of the Member State to which the acts of infringement or threatened infringement were committed, including the private international law".

The IPKat feels that, on a literal interpretation, both these provisions would appear to give Chronopost at least a good argument in favour of their claim. If DHL is to avoid pan-European relief, there must be some cogent ground that can be raised in a country other than France that the prohibition should not be enforced (eg implied licence, estoppel) or DHL must successfully challenge the validity of the Community trade mark. Merpel however reminds the IPKat that literal interpretation is not the name of the game.

Another correspondent, who has not confirmed whether the IPKat can give her name, adds:

"All these important issues regarding the jurisdiction of national Community Trade Mark Courts and the validity and enforceability of cross-border injunctions, have been long discussed among lawyers in the various Member states and the answers given are not always in the same direction.

I'm looking very much forward to reading the judgment of the ECJ, in reply to this preliminary ruling. This could be an occasion for the Court to interrpret the provisions of the CTMR, also taking into account the Brussels I Convention (Regulation 44/2001 on jurisdiction, recognition and enforcement of judgments in civil matters), which applies for all issues not settled in the CTMR itself".

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