C-235/09

French Republic v DHL Express France

Chronopost are the proprietors of French and Community trade marks “Webshipping” both of which were applied for in 2000. Chronopost brought proceedings for infringement against DHL and the Community court, having found the infringement to have been committed., issued a prohibition from proceeding with the acts complained of and attached a periodic penalty to the prohibition.

In an application before the Cours d’Appel, Chronopost sought to have the periodic penalty payment extended to the entire area of the European Community. The court, however, expressly indicated in its judgment that prohibition subject to a periodic penalty payment, applied only to French territory.

Chronopost, however, contend that because a Community trade mark has a unitary character, it must be given protection throughout the entire area of the Community and that by limiting the prohibition to France, the Cour d’Appel infringed Articles 1 and 98 of Regulation (EC) 40/94.

The Court de Cassation, therefore, refers the following questions to the Court:

• Must Article 98 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark be interpreted as meaning that the prohibition issued by a community trade mark court has effect as a matter of law throughout the entire area of the Community?
• If not, is that court entitled to apply specifically that prohibition to the territories of other States in which the acts of infringement are committed or threatened?
• In either case, are the coercive measures which the court, by application of its national law, has attached to the prohibition issued by it applicable within the territories of the Member States in which that prohibition would have effect?
• In the contrary case, may that court order such a coercive measure, similar or different from that which it adopts pursuant to its national law, by application of the national laws of the States in which that prohibition would have effect?