DHL v Chronopost: the Advocate General speaks, but not to some of us

Oh, the sheer excitement of it. When he got up this morning, the IPKat washed behind his ears and prepared himself for another humdrum day of website-sniffing, quite forgetting that a whopping great story was just about to break around him. Yes, today's the day of Advocate General Cruz Villalón’s Opinion in Case C-235/09 DHL Express (France) SAS v Chronopost SA.  The IPKat and some of his more learned readers have taken some interest in this French reference, as you can see if you click here, here and here.

To celebrate today's event -- and since the Opinion is available in only 10 of the EU's official languages -- the Court has issued a press release and this, for those who can't read the original, is what it says the Opinion's all about:

"Advocate General Cruz Villalón considers that 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 domestic courts of the other Member States must recognise coercive measures which ensure compliance with the prohibition and enforce them in accordance with their national law

The Community trade mark regulation 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.

In his Opinion delivered today, Advocate General Cruz Villalón considers, first, that, in principle, a prohibition issued by a national court acting as a Community trade mark court has effect as a matter of law throughout the entire area of the European Union.

In that connection, the Advocate General recalls that the Regulation confers jurisdiction on the competent national court to declare that a trade mark has been infringed in one or more Member States, so that its proprietor may apply to a single court in order to bring the acts of infringement to an end in several Member States. The declaration of infringement relates to a trade mark granted by the European Union, whose judicial protection is entrusted to special national courts of the EU and therefore, in principle, the declaration has effect throughout the entire area of the EU. [The words "in principle" suggest a clawback in favour of "in practice" or "but on the specific facts" ...]

However, [... and here it comes] where the infringement or action for infringement is limited to a specific geographical or linguistic area, the court’s order is limited territorially [There's a big difference between 'infringement', which is geographically determined by the alleged infringer's business activity, or by his websites, and 'action for infringement', which is determined by the CTM proprietor]. It follows that, since the prohibition is the natural consequence of the declaration of infringement, the territorial scope of the prohibition corresponds, in principle, to the scope of the infringement. [The Kat doesn't think this is a natural consequence at all. Where the similarity of respective marks is based on aural and conceptual similarity in some countries of the EU, but not in others where different phonetic and semantic considerations apply, but the defendant's activity is pan-European, it can be argued that prohibition in a country where relevant consumers do not perceive any similarity and are not confused is anything but 'natural']

Second, the Advocate General considers that coercive measures have effect within the territory in which the declaration of infringement was made and the prohibition issued.[If we're talking about a single, monocultural territory this is not novel -- but by 'territory' is something wider meant?]

In fact, the quantification and enforcement of those measures take place at a later stage, when, if the prohibition has been infringed, the penalty is applied. The court which has imposed the periodic penalty payment will have jurisdiction as regards its quantification and enforcement only where the prohibition is infringed in the Member State of that court. By contrast, where the prohibition is infringed in another Member State, quantification and enforcement will be a matter for the court of that Member State.

However, in order to ensure that the prohibition is complied with, the court of the Member State in which the prohibition has been infringed is obliged to recognise the effects of the periodic penalty payment imposed by the Community trade mark court of the other Member State, in accordance with the rules on recognition laid down by the Brussels I Regulation.

At the same time, such measures must be adjusted to the specific features of each legal system. Thus, the court of the Member State in which the prohibition has been infringed, if its national law so permits, is simply to recognise the order and apply the periodic penalty payment to the specific case. By contrast, if its national law does not provide for such a measure, it must achieve enforcement in accordance with its own national provisions".

The IPKat suspects that this Opinion will already have been seized by both war-camps in the battle over the issue of whether the use of a Community trade mark is 'genuine' if it takes place in only one Member State of the European Union.  However, he adds, we shouldn't rush to draw conclusions: we don't yet know what position the Court will take on this one.

Merpel says, so far as Community trade marks go, isn't WEBSHIPPING for "services for the collection and delivery of mail" pretty dire?