EPLAW Patent Blog

FR - SA Chronopost v. SAS DHL Express France

SA Chronopost v. SAS DHL Express France, community trademark (territorial scope of injunction; referral ECJ), Cour de cassation, Paris, France, 23 June 2009, Case no.:  08-13729, with thanks to Pierre Véron, Véron & Associés

This judgment issued by the highest court for civil cases in France may be of interest to patent practitioners, although it concerns Article 98 of the Council Regulation (EC) No. 40/94 of 20 December 1993 on the community trademark.

It is about the territorial scope of the injunction granted by a community trademark court. The Cour de cassation asks a preliminary ruling of ECJ to determine whether such injunction has automatically effect on the entire territory or the EC and, if not, whether the court is entitled to extend the injunction to other States. The ECJ answer to these questions may have some impact on cross border patent litigation.

The questions (in their unofficial translation) are:

DE - Fish-bite indicator / invalidity

Fischbissanzeiger (Fish-bite indicator), invalidity proceedings (inventive step), Federal Supreme Court, Germany, 18 June 2009, Docket No. Xa. ZR 138/05

For examining inventive step the “closest prior art” is not the sole starting point (deviation from the formal approach used by the EPO). Choosing a specific starting point requires a specific justification. In this context, it must be considered that the person skilled in the art attempts to find a better and different solution for a specific purpose. This approach prevents the courts from making an inadmissible hindsight assessment of prior art and urges them to consider all prior art that was actually available at the priority date.

Read the judgment (in German) here.