The European Court of Justice (ECJ) has ruled that an injunction and/or coercive measures ordered by a national court in proceedings under the Community Trade Mark Regulation (CTM Regulation) are effective throughout the EU. The decision (DHL Express (France) SAS v Chronopost SA) arises from a reference by the French Courts and is in line with the opinion of the Advocate General.

Chronopost SA issued proceedings against DHL Express (France) SAS for infringement of its word mark ‘WEBSHIPPING’ which is registered as a CTM and a French mark. The French courts had previously ruled that the injunction and penalty payments ordered by the national court applied only in France. However due to uncertainty as to the correct interpretation of the CTM Regulation, the proceedings were stayed and a reference was made to the ECJ.

In its decision, the ECJ stated that where a national court has jurisdiction under the CTM Regulation to take prohibitive action against the infringement or threatened infringement of a CTM (i.e. it is a CTM court), such prohibition extends to all EU member states. The ECJ stated that the CTM Regulation must be interpreted accordingly.

Further, under this decision, if the national law of a member state does not provide for the coercive measures issued by the CTM court, alternative national law provisions should be utilised so that the prohibition is applied in the same way.

This ruling enables CTM owners to protect their trade marks more effectively and more efficiently as the issue of prohibition orders by a CTM court has pan-European effect. It is therefore not necessary for CTM owners to issue proceedings in individual member states to prevent/remedy CTM infringement.

Contributed by Carol Plunkett.