Interflora gets general EU-wide injunction

Interflora Inc & Anor v Marks and Spencer Plc & Anor [2013] EWHC 1484 (Ch) (12 June 2013)  is the latest in a saga with many chapters. Last month Arnold J held that Marks & Spencer had infringed Interflora's trade marks, through keyword advertising: this month he  has granted a general injunction - as opposed to one that deals only with specific infringing acts - across the whole EU.

Such a general injunction might be thought to be disproportionate, and therefore contrary to the enforcement directive. It could have a chilling effect (something that in the depths of an English summer might almost go unnoticed) because the threat of content proceedings would be hanging over the party injuncted: but (on the basis of Hotel Cipriani Srl v Fred 250 Ltd [2013] EWHC 70 (Ch), [2013] EMTR 18 the fact that declaratory relief is available mitigates this undesirable possibility. In other words, you don't need to worry so much about going to gaol for contempt if all it takes is an application to the court to be guided on what you can and can't do. Then all you have to worry about is your lawyers' bills, although they will be smaller than they would be if a fresh application were needed or if you were hauled up for contempt.

The defendant had not managed to convince the court that the its infringement would not or was not liable to affect the functions of Interflora's CTM in other Member States, so the court applied the general rule that an injunction in a CTM case should apply throughout the Union (applying Case C-235/09, DHL v Chronopost [2011] ECR I-2801).

Recent Court of Justice activity on trade marks - updated part II

In Case C‑235/09, DHL Express France SAS, formerly DHL International SA v Chronopost SA, 12 April 2011 (press release here), a reference for a preliminary ruling under Article 234 EC, from the Cour de cassation (France), the Court of Justice gave judgment on the territorial scope of injunctions in CTM infringement cases. The Court followed the Advocate General's opinion and ruled that in general, when a Community Trade Mark Court orders a defendant to stop infringing a Community trade mark, the scope of that order will be EU-wide. This will not be the case where the trade mark owner asks for more restricted injunctive relief (obviously) or where the acts of infringement or threatened infringement are limited to a single Member State or to part of the territory of the European Union.

The Court also ruled that, where a court orders periodic penalty payments if the defendant fails to comply with an order, and the trade mark owner tries to enforce that order in the court of another EU member state which can’t grant an order for recurring payment, the court in that country must ensure that the coercive measure is enforced in an equivalent manner. This could cause problems for the English courts, which can’t order periodic penalty payments: they would have to rely on the rules on contempt.

How this might work in practice has already been considered at the High Court in a hearing before Mr Justice Kitchin on 14 April 2011 (reported by Herbert Smith who acted in the case here) in Kingspan v Rockwool regarding the form of declaration and relief. Kitchin J imposed an injunction covering only the UK and Ireland, although Rockwool Limited has also undertaken not to infringe Kingspan's trade marks in the rest of the EU. This suggests that the English courts will take a pragmatic approach. On the other hand there have been warnings (that one via Intellectual Property Magazine) that the case is a nail in the coffin of the specialist IP courts in this country and that litigants will go looking for “rocket docket” jurisdictions in the EU.