National courts' Community trade mark decisions have pan-EU effect, says ECJ advisor

Community trade marks give protection across all 27 member states of the European Union. Each country designates which of its courts can hear disputes over Community trade marks. These courts act as special courts of the European Union when carrying out those duties.

Pedro Cruz Villalón, an advocate general of the ECJ, has said in an opinion that trade mark decisions by national courts acting in that capacity can have an effect throughout the whole of the EU.

Advocates General produce opinions designed to advise the ECJ. The ECJ is under no obligation to follow the opinions but does so in the majority of cases.

Chronopost owns a French and a Community trade mark for the term 'webshipping' as applied to postal services. DHL Express used the term for an internet-based postal management system, and Chronopost sued for trade mark infringement.

A French court, acting as a Community trade mark court, said that there had been infringement and said that if DHL did not stop the infringement it would impose a financial penalty.

On appeal, Chronopost argued that it was wrong for the terms of the order to be restricted to DHL's activity in France, since its trade mark was a European one. The French court asked the ECJ if its orders could take effect outside of France.

Cruz Villalón said that it could.

"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," said an ECJ statement summarising his opinion, which is not yet available in English.

Cruz Villalón said that the Community Trade Mark Regulation gives national courts the power to declare that a trade mark has been infringed in other EU member states. That measure is designed to make it easier for trade mark owners to enforce their Community trade marks.

He said, though, that such pan-EU effects are not automatic, that the control exercised by a national court must only extend to where there is actual or threatened infringement.

"Where the infringement or action for infringement is limited to a specific geographical or linguistic area, the court’s order is limited territorially," said the summary of his opinion. "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 powers of a national court do not extend to the enforcement of any order it makes outside of its country's borders, though, Cruz Villalón said. If the court order is not obeyed and the delayed financial penalties have to be imposed, the burden of enforcing it falls on each country's own court, he said.

"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," Cruz Villalón said, according to the summary.

That other national court, though, will have to take account of the penalty laid down by the original court, acting as a Community trade mark court.

"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," said the summary of Cruz Villalón's opinion. "By contrast, if its national law does not provide for such a measure, it must achieve enforcement in accordance with its own national provisions."