openPR Logo
Press release

On the scope and effect of a decision rendered by a Community Trademark Court within the European Community

05-09-2011 05:32 PM CET | Politics, Law & Society

Press release from: bunk-alliance Rechtsanwälte

bunk-alliance Rechtsanwälte

bunk-alliance Rechtsanwälte

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.

bunk-alliance Rechtsanwälte, offers legal advice to middle-sized companies, both foreign and domestic, on all areas of commercial law, as well as solutions to complex issues.
Our law firm’s attorneys possess extensive knowledge in their jurisdiction and have broad range of experience in international cases. Be it company law, M & A, bankruptcy law, complex restructuring or debt recovery, together we formulate the best solution for you and your company.
An important part of our activities lies in assisting companies facing financial difficulties. We work together with creditors and investors to overcome these issues and ensure that possible risks for the management, partners and lenders are minimized. We also have extensive experience in buying out companies or parts of companies from a crisis situation.
Another important part of our activities is advising foreign companies on entry into the German market, or those who are already here. We provide expert, targeted advice to our foreign clients on all areas of law related to commercial activities in Germany.

bunk-alliance Rechtsanwälte
Goethestr.15, 67547 Worms
Tel: 06241972490
Fax: 062419724911

This release was published on openPR.

Permanent link to this press release:

Please set a link in the press area of your homepage to this press release on openPR. openPR disclaims liability for any content contained in this release.

You can edit or delete your press release On the scope and effect of a decision rendered by a Community Trademark Court within the European Community here

News-ID: 174151 • Views: 2107

More Releases from bunk-alliance Rechtsanwälte

German Local Trade Tax
German Local Trade Tax
All the companies in Germany are liable to pay not only corporate income tax, whose rate is nowadays about 15% of the annual profit of the company, but also trade tax (Gewerbesteuer), which is a tax of German characteristics. Why would we say that trade tax is of German characteristics? Because it is different from the corporate income tax, which is charged by the German Federal Government and it is difficult
PL: The envisaged repeal of special proceedings in commercial matters as a chanc …
The Polish cabinet accepted the long expected law proposal, which shall repeal commercial matters by changing the Civil Procedure Act. Currently, legal disputes between companies are decided in consideration of special regulations, which impose significant obligations on the parties already when filing the particulars of claims and which contain severe consequences in case of disregard, to the point of losing the proceedings, in particular the obligation to present all allegations
EU: Introduction of a unitary EU patent moves closer
On 26.06.2011, the EU Council of Ministers, on request of several delegations, released a general approach on the two draft regulations on the EU patent. Prior to this, the non-participating member states, Spain and Italy had filed a lawsuit with the European Court of Justice with regard to the Regulation implementing enhanced cooperation in the area of the creation of unitary patent protection. By the lawsuit, Spain and Italy turn
EU: Resolution order on the preliminary garnishment of accounts shall advance th …
According to the European Commission approximately one million of smaller companies face difficulties when trying to enforce and recover outstanding receivables abroad. Thus receivables amounting up to EUR 600 million are unnecessarily written off per year, only because companies don’t want to get themselves into costly and for them opaque litigations in other countries. According to its own statement, the European Commission wants to make it easier for citizens and

All 5 Releases

More Releases for European

European Gastroenterology Congress
Peers Alley Media Conferences would like to invite all the outstanding gastroenterologists, gastroenterology surgeons, scientists, academicians, young researchers, business delegates and students from all around the world to attend European Gastroenterology Congress from March 23-24, 2020 in Paris, France. This conference gives an unparalleled opportunity to network with colleagues and learn from the different leaders in gastroenterology research. This conference makes a perfect platform for global networking as it brings together the
23rd European Nephrology Conference
23rd European Nephrology Conference is the world’s leading conference for Nephrology professionals to gather and contribute their research for developing the new techniques in the field of Nephrology. Nephrology Conferences offers over 30 sessions from different areas in the field of Nephrology in the form of Keynote, Plenary and workshop sessions including oral and poster presentations. Nephrology Conferences which is going to be held in global & ancient city Rome, Italy
27th European Diabetes Congress
Rising awareness, new technologies and practical approaches within the field of diabetes and endocrine disorders in world’s leading diabetes Conferences One in eight ladies can develop a diabetes disorder throughout her lifespan. And, the amount of individuals affected by diabetes disorders continues to rise every year. However the larger drawback is that almost 60 minutes of those individuals are fully unaware of their condition as well as a way to heal
4th European Biopharma Congress
Biopharmaceuticals Conference Series Conference Series has been instrumental in conducting international Biopharmaceuticals meetings for several years, and very excited to expand Europe, America and Asia Pacific continents. Previous meetings were held in major cities like San Francisco, Baltimore, with success the meetings again scheduled in continents. 4th European Biopharma Congress, is scheduled to be held during November 09-11, 2017; at Vienna, Austria. The opportunity in biopharmaceuticals is big and growing too
18th European Diabetes Congress
It takes us immense pleasure to announce the conference that 18th European Diabetes Congress which is going to be held during July 17-18, 2017 at Lisbon, Portugal. Euro Diabetes 2017 conference will focus on the latest and exciting innovations in all areas of Diabetes research which offers a unique opportunity for investigators across the globe to meet, network, and perceive new scientific innovations. This year’s annual congress highlights the theme, “Diabetes
PRISMA European Capacity Platform named Project of the Year at European Gas Conf …
The brand new PRISMA European Capacity Platform, BP’s Vice President for Shah Deniz, Al Cook, and Dr Jonathan Stern of the Oxford Institute for Energy Studies, were honoured at the annual European Gas Conference Awards at the Palais Coburg in Vienna on Wednesday evening. During the awards ceremony, which was attended by leading experts from the European gas industry, PRISMA was named Project of the Year; Al Cook was