An injunction issued by a national court acting as a Community Trade Mark (“CTM”) court against infringement or threatened infringement of a CTM generally has effect throughout the entire area of the EU, even though the court may have found such infringement to be limited to certain Member States. So confirmed the ECJ recently in Case C-235/09, DHL Express France SAS v Chronopost SA, 12 April 2011).
The ECJ’s approach seeks to protect CTM owners from having to commence fresh infringement proceedings each time a defendant starts to exploit a CTM in EU territories that are not already the subject of injunctive relief and the number of inconsistent decisions that could potentially arise as a consequence, particularly given the factual assessment of likelihood of confusion.
Restrictions on scope
However, a CTM court should not grant an injunction in respect of EU territories (not it seems necessarily Member States) in respect of which the functions of the trade mark (in particular, its ability to act as a badge of origin) are not affected, for example on linguistic grounds. Nevertheless, it will be up to the defendant to prove that this is the case. A simple example might be the CTM “House” registered for fruit. The use by the defendant of the word “Haus” for the same goods might raise a likelihood of confusion in Germany (based on the phonetic and conceptual similarities) but arguably not in England.
The ECJ also noted that the claimant might choose to plead infringement in relation to specific Member States only, in which case the injunction would not extend beyond those Member States.
There could be other reasons for an injunction to be limited just to certain Member States, for example if the claim is based on damage to reputation and the CTM has a geographically limited reputation. In Case C-301/07, Pago International v Tirolmilch (reported in IP News, December 2009), the ECJ held that reputation in part only of the EU (in that case, Austria) could be a sufficient basis for CTM protection (though this depended on the circumstances of the case and was not a general rule). It would then be for the defendant to disprove reputation in all the other territories of the EU in which it wished the injunction not to apply on the basis that, in particular, the advertising, communication or investment functions of the trade mark were unaffected there. However, a defendant may find it difficult to prove a negative.
National approaches compared
The ECJ’s approach appears to be broadly consistent with that of the English courts in relation to the grant of injunctions for infringements of UK trade marks. For national UK intellectual property right registrations, the usual form of an injunction merely restrains infringement of the registration (implicitly throughout England): see for example Coflexip v Stolt Comex [2001] R.P.C. 9, a patent case. However, the court retains a discretion to tailor the injunction to the circumstances, for example where the grant of a broad injunction would be unfair on the defendant because the infringement is geographically limited as well as innocent (see Associated Newspapers v Express Newspapers [2003] F.S.R. 51). This contrasts with the position in France and Germany where the court cannot limit an injunction restraining infringement of a national trade mark registration to a part of the country.
Unless narrowly drawn CTM injunctions become the exception, the whole unitary nature of the CTM could be undermined.
By Alex Batteson, London, Sandra Georges, Paris and Fabian Ziegenaus, Düsseldorf
