## Facts

- Chronopost owned the “WEBSHIPPING” mark as both a French national trade mark and a Community trade mark (CTM) covering an automated online mailing-management system.
- DHL used the signs “Web Shipping” and “Webshipping” for its own internet-based shipping services.
- Chronopost sued DHL in France for infringement of both the French mark and the CTM.
- A French trial court found infringement only of the French mark and did not rule on the CTM; Chronopost appealed.
- The Paris Court of Appeal found infringement of both marks and ordered DHL to cease use of the signs, without specifying whether the prohibition was limited to France or extended across the European Union.
- The French Court of Cassation referred questions to the CJEU on (i) the territorial scope of CTM prohibitions under Regulation 40/94 and (ii) the cross-border effect of coercive measures (e.g., periodic penalty payments) attached to such prohibitions.

## Issues

1. Whether a prohibition issued by a Community trade mark court against infringement or threatened infringement of a CTM generally extends to the entire European Union under Article 98(1) of Regulation 40/94, and when it must be territorially limited.
2. Whether coercive measures ordered under national law to secure compliance with a CTM prohibition have effect in other Member States, and what framework governs their enforcement.

## Decision

- The CJEU held that, as a rule, a prohibition against further infringement or threatened infringement of a CTM issued under Article 98(1) extends to the entire territory of the European Union.
- The Court held that the territorial scope of such a prohibition may, and in certain circumstances must, be restricted.
- The Court held that a coercive measure (such as a periodic penalty payment) ordered under national law to ensure compliance with the prohibition has effect in other Member States to which the prohibition extends.
- The Court stated that recognition and enforcement of coercive measures in other Member States are governed by Regulation 44/2001 (Brussels I).

## Legal Principles

- CTMs confer unitary, EU-wide protection; therefore, injunctions issued by competent CTM courts are presumptively EU-wide in scope.
- The exclusive right to prohibit use of a sign is limited to situations where the use affects, or is liable to affect, the functions of the trade mark (including origin-indicating function).
- A CTM court must limit an injunction territorially when the proven or threatened impairment of trade mark functions is confined to a single Member State or part of the EU, including where:
  - the claimant limits the territorial scope of the claim; or
  - the defendant shows the sign’s use does not affect the mark’s functions outside certain areas (including linguistic reasons).
- Coercive measures securing compliance with a CTM injunction are co-extensive with the injunction’s territorial scope, and their cross-border enforcement proceeds under Brussels I mechanisms.

## Conclusion

The CJEU interpreted Regulation 40/94 to make CTM infringement prohibitions generally effective across the EU, while requiring territorial limitation where the mark’s functions are not affected beyond particular areas; coercive measures attached to such prohibitions may likewise operate cross-border, subject to Brussels I enforcement rules.


DHL Express Fr. SAS v. Chronopost SA, Case C-235/09 (C.J.E.U. 2011)