In October 2010 the Advocate General Pedro Cruz Villalón, gave his opinion, in which he commented on the geographical extension of a judgment rendered by the Community Trademark Courts with respect to the other member states of the European Union and how execution proceedings menaced by such a court, can be acknowledged and forced through.

The current proceedings before the ECJ were let by a legal dispute between the French company Chronopost S.A., who is the owner of the French trademark and the community trademark WEBSHIPPING and DHL Express France S.A., who advertised with the wording “WEB SHIPPING” and “WEBSHIPPING” and offered services hereunder. Chronopost S.A. took DHL Express France S.A. in front of the Tribunal de grande instance de Paris for infringement of their community trademark. The court came to the conclusion that Chronopost’s community trademark was infringed by DHL Express France S.A. and rendered a prohibitory injunction and in case of a violation of that injunction, the court menaced a penalty payment.

DHL Express France S.A. appealed the judgment in front of the Cour d‘appel de Paris, who confirmed the previous judgment. In a cross appeal, Chronopost claimed that the restraint to use the community trademark WEBSHIPPING shall be extended to the entire territory of the European Union, which was rejected by the Cour d‘appel de Paris. As court of last resort, the Cour de cassation decided to present the question on the geographic range of court decisions of a Community Trademark Court to the ECJ and to investigate, which enforcement proceedings can be determined within the member states, in which the restraint has an effect and how those enforcement measures can be applied and enforced by the courts of different member states of the European Community.

It should be pointed out that the Community Trademark Courts, which were erected based upon Council Regulation EC no. 207/2009 on the community trademark, act as particular national courts of the European Community, which are designated by the member states and which shall perform - based upon the Council Regulation on community trademarks - the rights deriving out of the particular property rights of the community. By this the Community Trademark Courts shall ensure the uniformity of this substantive law of the community trademark, its homogenous protection in the European Union and they shall secure the effectiveness and efficiency when pursuing and enforcing community trademark rights within the European Union. In more specific terms, this means that a company which has had a community trademark registered with the Office for Harmonization in the internal market in Alicante/Spain, shall have such community trademark defended against potential infringements in front of national courts of the member states in the entire European Union, dependent only on the court of venue as given by the Council Regulation on community trademark.

In the present case, the Tribunal de grande instance de Paris has decided as Community Trademark Court that DHL Express France S.A. is prohibited to offer services using the wording WEBSHIPPING and the court has menaced a penalty payment in case of violation of such judgment. Regarding the geographic effect of such decisions, the Advocate General Villalón came to the conclusion that a judgment rendered by the Community Trademark Courts in general is effective in the entire European Union. However that basic rule is directly limited by him, by saying that each legal dispute can be ascribed to the factual and legal circumstances and therefore they might also be cases, in which the plaintiff reacts only upon an infringement in one member state and therefore the court judgment is geographically limited to the member state, in which the infringement took place. The Advocate General amplified that such an exception might occur in particular in areas, in which a trademark related likelihood of confusion results out of the languages used in such member states. The Advocate General also indicates in his opinion a kind of reversal of the burden of proof. Thereby the Advocate General acts on the assumption that a judgment rendered by the Community Trademark Courts in general has an effect within the entire territory of the European Union, providing that the plaintiff has not limited the geographic area of the infringement. The defendant is then obliged to prove that the infringement was limited only to a particular geographic area and thereby prove that a judgment rendered by the Community Trademark Courts is effective only in one member state of the European Union, if applicable.

Subsequently the question is raised, how to proceed, if for example a French Community Trademark Court has rendered a decision, in which it has menaced a penalty payment upon the defendant in case of a new usage of the community trademark or a similar phrasing and the defendant infringes that decision in another member state of the European Union, e.g. Poland. Insofar it was doubtful, if such cases should be treated equally or if the procedural law of the member state had to be applied. The Advocate General Villalón distinguishes two cases, one in which penalty payments were menaced in order to secure that the prohibition to use the community trademark was obeyed and cases, in which provisions were menaced, which did not serve primarily the purpose to ensure the abiding of the prohibition. Moreover the Advocate General distinguishes between three stages, which were passed through by a penalty payment, starting with the menacing of the same over the determination up to the enforcement. In each of those cases, it is doubtful whether the enforcement of those provisions are based upon the law, of the member state, which had issued the original judgment (in the above case France) or upon the law of the member state, in which the judgment was infringed (in this case Poland). The Advocate General came to the conclusion that the menacing of penalty payments are already issued by the original court and article 98 sec. 1 of the Council Regulation EC no. 207/2009, refers to the law of the member state, in which the plaintiff has filed his lawsuit in front of the Community Trademark Court. The determination and enforcement of the penalty payment however has to be carried out in a different member state, in our model case Poland. With respect to the recognition of a judgment in a country, in which such judgment was violated, the Advocate General referred to Council Regulation EC no. 44/2001. Thus the Polish courts would have to acknowledge the French judgment providing the certificate in accordance with article 54 and 58 of Council Regulation no. 44/2001 and a corresponding translation of the judgment into Polish would have been presented and the Polish courts would have to issue an execution clause. If the legal coercive measure menaced by the court of origin is not known to the enforcing court, the enforcing court has to determine an equivalent coercive measure in order to enforce the judgment efficiently. The determination and the enforcement of a penalty payment is then carried out in accordance with the law of the member state, in which the judgment was infringed.

In our opinion the Advocate General’s opinion is easily comprehensible and a further step with regard to legal unification and clarity within the European Union. If such a judgment of a Community Trademark Court would not be effective within the entire European Union, the owner of a community trademark would still have to institute proceedings against a violator in each member state of the European Union, in order to protect his rights. In such case it cannot be excluded that the courts of the member states would come to different results, which conflicts the system of uniformity in the European Community.

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This release was published on openPR.