DHL Express France SAS v. Chronopost SA

Chronopost SA (Chronopost) (plaintiff) trademarked the sign Webshipping as applied to an automated system for managing mailing services. It registered this trademark in France and as a community trademark (CTM) in the European Union (EU). Chronopost’s CTM was registered on May 7, 2003. In September 2004, Chronopost sued DHL Express France SAS (DHL) (defendant), a competitor in the mailing and shipping industry, over its use of the signs Web Shipping and Webshipping (the Webshipping signs) to designate its own internet-managed mailing services. Chronopost filed its suit in a French regional court, which heard the action as a properly designated CTM court under EU law. Chronopost alleged infringement of both the French mark and the CTM. On March 15, 2006, the regional court held that DHL had infringed Chronopost’s French mark but did not make a finding on infringement of the CTM. Chronopost appealed. The Paris Court of Appeal found that DHL had infringed both Chronopost’s French and CTM marks and issued an order prohibiting DHL’s continued use of the Webshipping signs. That order did not address the territory to which the prohibition applied. Chronopost appealed this prohibition order, arguing that under Articles 93, 94, and 98 of EU Council Regulation No. 40/94 (the regulation) it should extend, as a matter of law, to the entire EU. The French court stayed proceedings to seek guidance from the EU Court of Justice, which issued a preliminary ruling.