ECJ ruling allows Community trade mark court decisions to be applicable throughout the EU
21 April 2011
Under the Community Trade Mark Regulation, trade mark protection
extends throughout the whole of the EU. National courts can be
designated as Community trade mark courts allowing them to rule on
issues concerned with the EU trade marks system.
The ECJ has recently ruled that a decision by any Community
trade mark court extends throughout the whole of the EU, and not
just to the Member State in which the action was brought. Not only
will this ensure that a uniform approach to trade mark protection
is taken throughout the EU, but it also means that Community trade
mark owners will not be forced to take separate actions against
infringers in several Member States, thus reducing both cost and
time.
However, the ECJ stated that there may be occasions where acts
of infringement or threatened infringement of a Community trade
mark are limited to a single Member State or to only part of the
EU. The ECJ outlined two examples of when this might occur:
- where the applicant has explicitly restricted the territorial
scope of its application; or
- where the defendant proves that the use of the trade mark does
not or is not liable to affect the functions of the trade mark, for
example, on linguistic grounds.
Where a Community trade mark court has ordered an infringer to pay
penalties then these will also usually apply throughout the EU.
However, where a Member State does not have laws allowing for such
penalties as ordered they must find a way within their national
laws to ensure that the prohibition originally issued by the
Community trade mark court is complied with by an equivalent
method.