DHL Express France SAS v Chronopost SA.
Date: 2011-04-12
33. It must be observed that the territorial scope of a prohibition against further infringement or threatened infringement of a Community trade mark, as provided for in Article 98(1) of Regulation No 40/94, is to be determined both by the territorial jurisdiction of the Community trade mark court issuing that prohibition and by the territorial extent of the Community trade mark proprietor’s exclusive right which is adversely affected by the infringement or threatened infringement, as that extent results from Regulation No 40/94.
39. Second, the exclusive right of a Community trade mark proprietor, conferred under Regulation No 40/94, extends, as a rule, to the entire area of the European Union, throughout which Community trade marks enjoy uniform protection and have effect.
40. In accordance with Article 1(2) of that regulation, a Community trade mark is to have a unitary character. Having equal effect throughout the European Union, it may not, in accordance with that provision, be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor may its use be prohibited, save in respect of the whole of the European Union. This principle is to apply unless otherwise provided in that regulation.
41. In addition, it follows from the second recital in the preamble to Regulation No 40/94 that the objective pursued by that regulation involves the creation of Community arrangements for trade marks to which uniform protection is given and which produce their effects throughout the entire area of the European Union.
42. The unitary character of the Community trade mark is also apparent from the fifteenth and sixteenth recitals in the preamble to Regulation No 40/94. These state, first, that the effects of decisions regarding the validity and infringement of Community trade marks must cover the entire area of the European Union, in order to prevent inconsistent decisions on the part of the courts and OHIM and to ensure that the unitary character of Community trade marks is not undermined, and, second, that contradictory judgments should be avoided in actions which involve the same acts and the same parties and which are brought on the basis of a Community trade mark and parallel national trade marks.
43. In addition, the Court has already held, at paragraph 60 of the judgment in Case C-316/05 Nokia [2006] ECR I‑12083, that the objective of Article 98(1) of Regulation No 40/94 is the uniform protection, throughout the entire area of the European Union, of the right conferred by the Community trade mark against the risk of infringement.
44. 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 area of the European Union.
46. However, 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 (see, to that effect, Joined Cases C-236/08 to C‑238/08 Google France and Google  [2010] ECR I-0000, paragraph 75 and the case-law cited).
47. It follows, as the European Commission has pointed out, 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.
53. In that connection, it must first be recalled that, as regards the law applicable to coercive measures, the Court has already held that the Community trade mark court seised is required to select, from among the measures provided for under the legislation of its own Member State, such measures as are aimed at ensuring that the prohibition that it has issued is complied with ( Nokia , paragraph 49).
54. Second, coercive measures ordered by a Community trade mark court pursuant to its Member State’s national law can achieve the objective for which they were issued – namely, ensuring that a prohibition is complied with so that the right conferred by a Community trade mark against the risk of infringement is actually protected throughout the area of the European Union (see, to that effect, Nokia , paragraph 60) – only if the measures have effect in the same territory as that in which the prohibition order itself has effect.
57. 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, to that effect, Nokia , paragraphs 58 and 60).
58. In that connection, it should be recalled that under the principle of sincere cooperation laid down in Article 4(3), second subparagraph, TEU, it is for the Member States’ courts to ensure judicial protection of an individual’s rights under European Union law (see, to that effect, Case C-432/05 Unibet  [2007] ECR I‑2271, paragraph 38 and the case‑law cited). By virtue of that same provision, the Member States are to take any appropriate measure, general or particular, to ensure fulfilment of the obligations arising out of the Treaties or resulting from the acts of the institutions of the Union. In particular, under Article 3 of Directive 2004/48, Member States are to provide for the measures, procedures and remedies necessary to ensure the enforcement of the intellectual property rights covered by that Directive, including, inter alia, the rights of trade mark proprietors. In accordance with Article 3(2), those measures, procedures and remedies are to be effective, proportionate and dissuasive and are to be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.