Article 22(4) of Council Regulation (EC) is not applicable to disputes about whether a person is entitled to be registered as a trademark holder

Print this page 25-10-2017
IPPT20171005, CJEU, Hanssen Beleggingen

Article 22(4) of Council Regulation (EC) regarding proceedings concerned with the registration or validity of an intellectual property right is not applicable to disputes about whether a person is entitled to be registered as a proprieter of a trade mark

 

PRIVATE INTERNATIONAL LAW - TRADE MARK LAW

 

On 7 September 1979, a German company owned by Mr Helmut Knipping applied to the Benelux Intellectual Property Office  for registration of the Benelux word-/figurative sign “knipping” as a Benelux trade mark. On 9 October 1995, Mr Knipping died. Ms Prast-Knipping requested the BIPO on 14 November 2003 to register her as a proprietor of the trade mark. The BIPO complied with the request because she stated that she was the sole heiress of Mr Knipping. Hanssen Beleggingen, a company incorporated under Dutch law, contests the registration. Hanssen Beleggingen brought an action against Ms Prast-Knipping before the Landgericht Düsseldorf. The Landgericht Düsseldorf dismissed that action and Hanssen brought an appeal before the Oberlandesgericht Düsseldorf. That court has doubts concerning the international jurisdiction of the German courts to hear the case. It considers that whilst jurisdiction could derive from Article 2(1) of Regulation No 44/2001, it is also possible that the courts of the Member State in which registration of the trade mark at issue in the main proceedings has taken place have exclusive jurisdiction under Article 22(4) of that regulation.

 

The Court of Justice of the European Union answers the question as follows:

 

Article 22(4) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters must be interpreted as not applying to proceedings to determine whether a person was correctly registered as the proprietor of a trade mark.

 

A few interesting considerations:

 

33. The objective of Article 22(4) of Regulation No 44/2001 is to ensure that jurisdiction for proceedings concerned with the registration or validity of intellectual property rights rests with courts closely linked in fact and law to the register, since those courts are best placed to adjudicate on cases where the validity of the right, or even the existence of the deposit or registration, is in dispute (see, to that effect, as regards Article 16(4) of the Brussels Convention, judgment of 13 July 2006, GAT, C4/03, EU:C:2006:457, paragraphs 21 and 22).

 

34. Accordingly, the Court has held, in cases concerning jurisdiction in the field of patents, that, where the dispute concerns neither the validity of a patent nor the existence of its deposit or registration, the dispute is not covered by the concept of proceedings ‘concerned with the registration or validity of patents’ and therefore falls outside the exclusive jurisdiction of the courts of the Member State in which the right was registered (judgments of 15 November 1983, Duijnstee, 288/82, EU:C:1983:326, paragraphs 22 to 25, and of 13 July 2006, GAT, C4/03, EU:C:2006:457, paragraphs 15 and 16).

 

35. Proceedings concerning exclusively the question of who is entitled to a patent do not therefore fall within the scope of such exclusive jurisdiction (judgment of 15 November 1983, Duijnstee, 288/82, EU:C:1983:326, paragraph 26).

 

36. As the Advocate General stated in points 26 to 29 of his Opinion, that interpretation may be applied to a case relating to a trade mark, such as that in the main proceedings, which concerns neither the validity nor the registration of the trade mark but concerns exclusively the question of whether a person whose name has been registered as the proprietor is in fact the proprietor.

 

37. Proceedings in which there is no dispute regarding the registration of the trade mark as such or its validity are covered neither by the words ‘proceedings concerned with the registration or validity of … trade marks’ in Article 22(4) of Regulation No 44/2001, nor the objective underlying that provision. In that regard, the Court points out that the question of the individual estate to which an intellectual property right belongs is not, generally, closely linked in fact and law to the place where that right has been registered.

 

38. That appears to be the case here. As is clear from the order for reference, the proceedings concern the ownership of trade mark No 361604 following the death of Mr Knipping; it must therefore be ascertained whether that trade mark formed part of Mr Knipping’s estate at the time of his death.

 

39. It follows from all the foregoing considerations that a case such as that at issue in the main proceedings, which concerns exclusively the question of who must be regarded as the proprietor of the trade mark at issue, does not fall within the scope of Article 22(4) of Regulation No 44/2001.

 

C-341/16 - ECLI:EU:C:2017:551

 

IPPT20171005, CJEU, Hanssen Beleggingen