EU: Trade marks: ECJ confirms EU-wide injunctions against CTM infringements
The ECJ has held that an injunction issued by a national court acting as a Community Trade Mark (“CTM”) court against infringement or threatened infringement of a CTM generally or “as a rule” has effect throughout the entire area of the EU. A coercive measure, such as a periodic penalty payment, ordered by a CTM court in order to ensure compliance with such an injunction, will have effect in those other Member States to which the injunction extends. Where the national law of any such Member State does not provide for a similar measure, that State’s court must still attain the objective pursued by the measure by recourse to its own national law (Case C-235/09, DHL Express France SAS v Chronopost SA, 12 April 2011). The ECJ’s decision broadly confirms the opinion of Advocate General Cruz Villalón (reported in Linklaters IP News, December 2010).
However, the scope of any injunction must be restricted to only those parts of the EU in which the functions of the CTM (in particular, its ability to act as a badge of origin) are affected. The ECJ gave the example of the functions not being affected on linguistic grounds. This suggests that an injunction may not extend to Member States where the defendant has proved that there was no likelihood that the average consumer would be confused by their word mark (for example, in a country where the mark is plainly a mere descriptive term). 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 only has a reputation in part of the EU. 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, but that this depended on the circumstances of the case and was not a general rule.
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