Community mark and infringements

The last 12 April 2011, the European Court of Justice has issued a decision on an interesting matter concerning the Community trade mark and its protection inside the EU area. In particular, the Court has furnished a Community oriented interpretation about the Regulation (EC) 40/94 on the Community trade mark (currently repealed and replaced by the recent Regulation (EC) 207/2009).

The judicial principle elaborated by the Court of Justice is as follows: “the scope of the prohibition against further infringement or threatened infringement of a Community trade mark, issued by a Community trade mark court…extends, as a rule, to the entire area of the European Union... [and] ...the other Member States are, as a rule, required to recognise and enforce the judgment, thereby conferring on it a cross-border effect”.

The matter arises upon a litigation pending in France between two companies leader in mailing services management. The litigation concerned infringement’s acts of a mark related just to a particular mailing service. The company proprietor of the Community mark (regularly registered), despite the fact that it has obtained a judicial declaration of the breach of its own right and the consequent order against the other company concerning both the prohibition for the latter to continue to use to infringed mark and a coercive penalty (according to the French system, the so called “astreinte”), it has brought an appeal before the French Court of Cassation. The subject of such appeal concerned the violation of the Regulation 40/94 and, in particular, the articles 1 and 98 (which are, at the moment, the articles 1 and 102 of the new regulation 207/2009). That, because the effectiveness of both the prohibition and the coercive penalty would not have been extended by the French judges to the whole EU area; on contrary, the effectiveness had been limited just internally to the France. Hence, the preliminary ruling demanded by the French Court of Cassation to the Court of Justice.

Then, the latter has specified in an exhaustive way how the scope of the Community discipline is the one to equally protect, on the whole European Union area, the right conferred to the Community mark against the risk of infringements. In fact, in the practice appears quite clearly how it is necessary, in order to guarantee the effectiveness of the protection of such a right, that the judicial decisions (as, for example, just those that prohibit infringement’s acts) can and must extend, potentially, to the entire area of the European Union. On contrary, the Community mark would lose the most part of its content and it would not find a protection as right as appropriate. Therefore, under this point of view, the Court has rightly pointed out how, without an uniform protection “the defendant would begin to exploit the sign at issue afresh in a Member State for which the prohibition had not been issued” and, moreover, “the new judicial proceedings which the Community trade mark proprietor would be compelled to bring would increase…the risk of inconsistent decisions…”. And, we add, that these new judicial proceedings would surely increase in an important way the costs and expenses of the proprietor of the right so to assert its own (and already affirmed) rights. Finally, and specifically regarding the effectiveness of the coercive measures, the Court has even faced the case, not rare in the practice, where the Member State does not contain measures similar to those ordered by another Member State. On this fact, the EU judges have declared that, should this be the case, it would be necessary that the competent court of the specific Member State applies its own domestic legislation and disposes the relevant and appropriate measures so “to ensure that the prohibition is complied with in an equivalent manner”.

Concluding, we must point out even a limit to the territorial extension of such judicial measures. In fact, the Court of Justice has even specified how the abovementioned extension to the whole EU area can not be in any case automatic. In this connection, we can read in the sentence 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... Therefore 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 European Union...because for example on linguistic grounds, that court must limit the territorial scope of the prohibition which it issues”.

For the sake of completeness, we must specify that, notwithstanding the repeal of the Regulation 40/94, the judicial principles which have been now elaborated by the Court of Justice shall be considered as “living law” and their significance shall surely cover the discipline of the new Regulation (CE) 207/2009.