Opinion of the Advocate General — ECLI:EU:C:2010:595
Date: 2010-10-07
Language of the case: French
Subject matter: Trade marks;Intellectual, industrial and commercial property;Area of freedom, security and justice;Judicial cooperation in civil matters
Procedure: Reference for a preliminary ruling
Origin: France

Summary of the Judgment 1. Community trade mark – Disputes relating to infringement and validity of Community trade marks – Penalties in case of infringement or threatened infringement – Prohibition against further infringement or threatened infringement – Extension of the prohibition to the entire territory of the European Union – Restriction of the territorial scope of the prohibition (Council Regulation No 40/94 as amended by Regulation No 3288/94, Arts 93(1) to (4), 94(1), and 98(1)) 2. Community trade mark – Disputes relating to infringement and validity of Community trade marks – Penalties in case of infringement or threatened infringement – Prohibition against further infringement or threatened infringement – Coercive measures attached to a prohibition – Effect in Member States other than the Member State of the court seised (Council Regulation No 40/94, as amended by Regulation No 3288/94, Art. 98(1), and Regulation No 44/2001) 1. Article 98(1) of Regulation No 40/94 on the Community trade mark, as amended by Regulation No 3288/94, must be interpreted as meaning that the scope of the prohibition against further infringement or threatened infringement of a Community trade mark, issued by a Community trade mark court whose jurisdiction is based on Articles 93(1) to (4) and 94(1) of that regulation, extends, as a rule, to the entire territory of the European Union. A Community trade mark court has jurisdiction in respect of acts of infringement committed or threatened within the territory of one or more Member States, or even all the Member States. Thus, its jurisdiction may extend to the entire territory of the Union. In addition, the exclusive right of a Community trade mark proprietor, conferred under Regulation No 40/94, extends, as a rule, to the entire territory of the Union, throughout which Community trade marks enjoy uniform protection and have effect. Furthermore, the objective of Article 98(1) of Regulation No 40/94 is the uniform protection, throughout the entire territory of the Union, of the right conferred by the Community trade mark against the risk of infringement. In order to ensure that uniform protection, a prohibition against further infringement or threatened infringement issued by a competent Community trade mark court must therefore, as a rule, extend to the entire territory of the Union. The territorial scope of the prohibition may, in certain circumstances, be restricted. The exclusive right of a Community trade mark proprietor, as provided for under Article 9(1) of Regulation No 40/94, is conferred in order to enable that proprietor to protect his specific interests as such, that is, to ensure that the trade mark is able to fulfil its functions. The exercise of that right must therefore be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark. It follows that the exclusive right of a Community trade mark proprietor and, hence, the territorial scope of that right, may not extend beyond what that right allows its proprietor to do in order to protect his trade mark, that is, to prohibit only uses which are liable to affect the functions of the trade mark. The acts or future acts of a defendant (namely the person whose use of the Community trade mark is complained of) which do not affect the functions of the Community trade mark, cannot therefore be prohibited. Accordingly, if a Community trade mark court finds that the acts of infringement or threatened infringement of a Community trade mark are limited to a single Member State or to part of the territory of the Union, in particular because the applicant for a prohibition order has restricted the territorial scope of its action in exercising its freedom to determine the extent of that action or because the defendant proves that the use of the sign at issue does not affect or is not liable to affect the functions of the trade mark, for example on linguistic grounds, that court must limit the territorial scope of the prohibition which it issues. (see paras 38-39, 43-44, 46-48, 50, operative part 1) 2. Article 98(1), second sentence, of Regulation No 40/94 on the Community trade mark, as amended by Regulation No 3288/94, must be interpreted as meaning that 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 to which the territorial scope of such a prohibition extends other than the Member State of that court, under the conditions laid down, in Chapter III of Regulation No 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, with regard to the recognition and enforcement of judgments. 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. That obligation to attain the objective pursued by the coercive measure constitutes an extension of the obligation on the Community trade mark courts to take coercive measures when they issue an order prohibiting further infringement or threatened infringement. Without those related obligations, a prohibition of that kind might not be coupled with measures aimed at ensuring that it is complied with, so that it would, to a large extent, have no dissuasive effect. (see paras 57, 59, operative part 2)