18.6.2011

Official Journal of the European Union

C 179/2

(Case C-235/09)(1)

(Intellectual property - Community trade mark - Regulation (EC) No 40/94 - Article 98(1) - Prohibition against infringement, issued by a Community trade mark court - Territorial scope - Coercive measures attached to such a prohibition - Effect in the territory of Member States other than the Member State of the court seised)

2011/C 179/02

Language of the case: French

Referring court

Parties to the main proceedings

Applicant: DHL Express France SAS, formerly DHL International SA

Defendant: Chronopost SA

Re:

Reference for a preliminary ruling — Cour de cassation — Interpretation of Article 98 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), in conjunction with Articles 1, 14 and 94 of that regulation — Trade mark infringement action — Territorial scope of a prohibition issued by a Community trade mark court — Whether such a court may attach coercive measures to that prohibition that are applicable on the territory of all the Member States in which the injunction prohibiting the infringing acts takes effect

Operative part of the judgment

1.Article 98(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, as amended by Council Regulation (EC) No 3288/94 of 22 December 1994, 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 area of the European Union.

2.Article 98(1), second sentence, of Regulation No 40/94, 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 Council Regulation (EC) No 44/2001 of 22 December 2000 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.

(1) OJ C 205, 29.8.2009.