Although the EU Community Trade Mark is a unitary right across all EU Member States and with most aspects of validity and infringement harmonised across the Community, there has always been some nervousness among some national Community Trade Mark Courts about how far their powers go when dealing with a CTM infringement. Some of that nervousness will have been swept away by the April 12 decision of the European Court of Justice in DHL v Chronopost.

The case was referred from France where Chronopost had sued DHL for infringing its community trade mark for "WEBSHIPPING". The French court held that the trade mark was valid and that DHL had infringed it. It ordered DHL to stop using the mark and for certain penalties to be paid. However, it did not state which territories these remedies extended to and the question arose whether they simply applied in France or also in other EU states in which DHL was using the mark.

The ECJ confirmed that the relief extends throughout the EU. This will provide a welcome clarification for rightsowners in that it will allow, in the right circumstances, a EU-wide case to be brought in only one Member State rather than having to re-litigate the matter numerous times and before unpredictable courts. It will still be necessary for the order to be enforced through local courts but that is generally simpler and cheaper, and the ECJ has made it clear that the local court should have little discretion in respect of how they do this. Even where its national rules do not allow for exactly the same remedy as the original court, then the enforcing court has to order the closest remedy it can.

This principle does not apply to all cases and it is worth bearing in mind the basic rules of jurisdiction under the European Trade Mark Regulation. The jurisdictional principles for most civil cases within the EU are set under the Brussels Convention. However, these principles are themselves subject to a special set of jurisdictional rules in respect of CTMs under the Regulation. These rules provide as follows:

• Where there is an infringement of a CTM then proceedings can be issued in the Member State where the Defendant is domiciled or, failing that, where it has a place of establishment.
  
• Failing that, proceedings can be brought in the Member State where the Claimant is domiciled or has a place of establishment.
  
• In either of these cases, the court can make an order giving remedies right across the EU and not simply in the Member State where the action was brought.
  
• It is also possible for proceedings to be brought in the Member State where the infringement is actually taking place. However, in these cases the court order can only extend to that Member State and not more generally across the EU.

The last point is important in that it serves to impose some limits on forum shopping. However, the ECJ's clarification of the rules for what Community Trade Marks Courts can do will inevitably encourage rights-owners to exercise even more carefully any choice of forum they may have.