TRADE MARK LAW – LITIGATION – PRIVATE INTERNATIONAL LAW
Prohibition extends, as a rule, to the entire area of the EU
• that Article 98(1) of Regulation No 40/94 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.
• Limitation of territorial scope required in case the use of the sign at issue does not affect or is not liable to affect the functions of the trade mark, for example on linguistic grounds.
Periodic penalty payment community trade mark court, or equivalent national provisions, has effect in Member States to which the territorial scope of such a prohibition extends
• In the light of the foregoing, the answer to the third and fourth questions is that Article 98(1), second sentence, of Regulation No 40/94 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 Regulation No 44/2001 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.