The issue of the territorial reach of a Court injunction against further infringement of a Community trade mark (CTM) has led, over the years, to conflicting decisions by the French Courts.
It may appear common sense to consider that a CTM, being a registered right with uniform effect over the entire territory of the European Union (EU), should entitle its proprietor to prevent any person, from making use of the CTM in any part of the EU.
However until recently this principle was not clearly settled in the French case law, as two main trends could be observed:
- the Paris First Instance Court, ruling as the only first instance CTM Court in France, has predominantly held that a Court injunction extends to the entire territory of the European Union, in cases where jurisdiction was based on the domicile of the parties (Articles 97(1) to 97(4) CTMR): indeed in those cases the CTM Court has jurisdiction to rule over facts of infringement committed in other member states (Article 98(1) CTMR);
- the Paris Court of Appeal, ruling as the only appeal CTM Court in France, has refused to grant “pan-European injunctions” on the basis that “the territorial reach of the injunction provided for under Article 102 CTMR should be consistent with the reach of the infringement of the right, insofar as only strictly necessary measures should be taken to ensure the effectiveness and protection of the Community right”; in addition, the Court of Appeal used to hold that coercive measures against infringers could only be limited to France;
In a dispute before the Paris Courts (ruling as CTM Courts) over the alleged infringement by DHL of the word CTM “Webshipping” registered by Chronopost to designate shipping and other related services, the Court of Appeal confirmed the finding of infringement by the First Instance Court, but refused to issue a pan-European injunction on the grounds that (i) only the perception of the sign by the French-speaking public had been assessed – i.e. it was not ascertained that the sign would be perceived as a trade mark by the public outside France, e.g. by the British public – and that (ii) it was not demonstrated that the national laws of other member states provided for coercive measures similar to the French “astreinte” – a periodic penalty payment.
On appeal by Chronopost, the French Supreme Court referred the following questions to the European Court of Justice (ECJ) on 23 November 2009: (i) whether an injunction issued by a CTM Court against further infringement should in principle extend to the entire territory of the EU and (ii) whether the coercive measures ordered by a CTM Court applying its national law are applicable in other EU member states.
The ECJ gave the following responses in its now famous Judgment of 12 April 2011 (case C-235/09):
- “the scope of the prohibition against further infringement or threatened infringement of a Community trade mark whose jurisdiction is based on Articles 93(1) to (4) and 94(1) [CTMR], extends, as a rule, to the entire area of the European Union”, and
- “a coercive measure, such as a periodic penalty payment, ordered by a Community trade mark court by application of its national law, in order to ensure compliance with a prohibition against further infringement or threatened infringement which it has issued, has effect in Member States other than the Member State of that court”. Furthermore, “where the national law of one of those other Member States does not contain a coercive measure similar to that ordered by the Community trade mark court, the objective pursued by that measure must be attained by the competent court of that other Member State by having recourse to the relevant provisions of its national law which are such as to ensure that the prohibition is complied with in an equivalent manner”.
The principle of pan-European effect of injunctions against further infringement of a CTM is thus clearly set out. It applies in all cases where the jurisdiction of the CTM Court is based on the domicile of the parties (Articles 97(1) to 97(4) CTMR). Where the CTM Court has jurisdiction based on the place of the acts of infringement (Articles 97(5) and 98(2) CTMR), the Court may only look at acts of infringement committed in such Member State and therefore may only issue injunctions limited to the territory of such Member State.
However, whilst injunctions issued by CTM Courts should in principle have a pan-European effect, not all such injunctions automatically apply across the territory of the EU. Indeed, the ECJ explicitly specified that “the territorial reach of the injunction may, in certain cases, be restricted”. Recalling that the scope of the trade mark right is limited with reference to the functions of a trade mark, the ECJ added that “the exercise of this right must be reserved to cases in which the use of a sign by a third party affects, or is likely to affect, the functions of the trade mark”.
In consequence, “the acts or future acts of the defendant (…) which do not affect the functions of the CTM cannot therefore be prohibited”. In other words, if the acts cannot be regarded as infringing in certain countries, e.g. where the signs cannot be visually, phonetically or intellectually perceived as a trade mark, the injunction should not apply to those countries.
The ECJ thus left the door open for further discussions as to the burden of proof on the parties: whilst it seems clear that it would be up to the defendant to show why the injunction should not apply in certain countries, it is reasonable to state that in practice the plaintiff should probably bring at least some evidence of acts of infringement taking place in other countries, in order to substantiate its request for pan-European injunctive relief.
Following the ECJ Judgment, the French Supreme Court issued its ruling in the Chronopost v. DHL case on 29 November 2011. Based on the principle set out by the ECJ, the Court held that the Paris Court of Appeal had not clearly specified the grounds on which a likelihood of confusion was limited, in this case, only to the French territory. The ruling of the Court of Appeal was thus partially cancelled by the Supreme Court, which called upon it to re-consider the case in this regard.
To our knowledge, no decision has yet been issued by the Court of Appeal. However a ruling is imminent.
It will be interesting to see whether the Court issues a pan-European injunction against DHL. Indeed, serious discussion may be had as to whether the word sign “Webshipping” could be perceived as a trade mark by the English-speaking public to designate shipping services.
Beyond this case, French case law in general should evolve considerably following the ECJ ruling. Although it is unfortunately still too early accurately to predict such changes, many adjustments in French practice should be observed soon:
- in the rulings of the French CTM Courts (Paris First Instance Court and Paris Court of Appeal), an injunction issued against further infringement of a CTM, without any specification as to the territorial scope of such injunction, should be construed as automatically applying to the entire EU territory ;
- this being said, where a pan-European injunction is sought, the plaintiff should be encouraged to call upon the Court to mention expressly that the injunction applies to the entire EU territory, so as to avoid any difficulty;
- plaintiffs should bring at least some evidence of the infringement taking place in countries other than France; on the other hand, defendants should try to provide, insofar as possible, evidence that the functions of the CTM are not affected in some countries;
- finally, as to enforcement of the decision, coercive measures as provided under French law (‘astreintes’) should also be requested by plaintiffs; if necessary, actions may be taken in other Member States where such measures do not exist (e.g. in the UK), to invite the local Courts to have the injunction enforced through the application of their local laws.
All in all, it is rather surprising that it has taken almost twenty years since adoption of the CTMR in 1993 for the principle of pan-European injunctions to be definitively settled. This solution is indeed in line with the very objectives set out in the Regulation. It should not be forgotten that the first sentence of Article 1(2) CTMR states that “a Community trade mark shall have a unitary character”.
No doubt CTM proprietors were pleased with the solution adopted by the ECJ. It is expected that the French Courts will not disappoint them either, and will give full effect to the principle of pan-European injunctions.
 Paris First Instance Court, 15 April 2010, Epson France, Case no. 09/817; Paris First Instance Court, 16 December 2008, Nike International, Case no. 07/4046 ; Paris First Instance Court, 10 September 2008, Louis Vuitton Malletier, Case no. 07/03120.
 Paris Court of Appeal, 22 October 2010, SARL GMBH, Case no. 09/10515.
 Paris Court of Appeal, 24 September 2008, Sanrio Co. Ltd, Case no.07/03078.
 Para. 46 of the Judgment.
 Para. 47 of the Judgment.
 French Supreme Court, 29 November 2011, Case no. 08-13729.