CJEU on jurisdiction in simultaneous and successive civil actions on the basis of EU- and national trade marks

Print this page 27-10-2017
IPPT20171019, CJEU, Merck v Merck

The condition laid down in Article 109(1)(a) of the EU Trade Mark Regulation as to the existence of the ‘same cause of action’ applies only in so far as those actions relate to an alleged infringement of a national trade mark and an identical EU trade mark in the territory of the same Member States. Where actions for infringement, the first on the basis of a national trade mark concerning an alleged infringement within the territory of a Member State and the second on the basis of an EU trade mark concerning an alleged infringement in the entire territory of the European Union, are brought before the courts of different Member States between the same parties, the court other than the court first seised must decline jurisdiction in respect of the part of the dispute relating to the territory of the Member State referred to in the action for infringement brought before the court first seised. The court other than the court first seised is not required to decline jurisdiction in favour of the court first seised if the actions in question no longer relate to the territory of the same Member States or if the trade marks concerned are not identical and valid for identical goods or services.

 

TRADE MARK LAW - PRIVATE INTERNATIONAL LAW

 

The Landgericht Hamburg has referred 7 questions concerning the interpretation of Article 109(1)(a) of the EU Trade Mark Regulation (concerning parallel and successive civil actions based on European Union marks and national marks). The text of this article is as follows: "Where actions for infringement involving the same cause of action and between the same parties are brought in the courts of different Member States, one seized on the basis of an EU trade mark and the other seized on the basis of a national trade mark: (a) the court other than the court first seized shall of its own motion decline jurisdiction in favour of that court where the trade marks concerned are identical and valid for identical goods or services. The court which would be required to decline jurisdiction may stay its proceedings if the jurisdiction of the other court is contested".

 

The Court of Justice finds that the existence of the ‘same cause of action’ is only present in so far as those actions relate to an alleged infringement of a national trade mark and an identical EU trade mark in the territory of the same Member States. Any other interpretation would lead to the result that the possibilities for a proprietor of an EU trade mark — who has initially brought an action for infringement against an alleged infringer on the basis of an identical national trade mark before a court of a Member State having jurisdiction, in infringement matters, limited solely to the territory of that Member State — to assert the rights which he derives from an EU trade mark in the territory of other Member States would be unduly restricted.

 

In addition, the CJEU states that - where actions for infringement, the first on the basis of a national trade mark concerning an alleged infringement within the territory of a Member State and the second on the basis of an EU trade mark concerning an alleged infringement in the entire territory of the European Union, are brought before the courts of different Member States between the same parties - the court other than the court first seised must decline jurisdiction in respect of the part of the dispute relating to the territory of the Member State referred to in the action for infringement brought before the court first seised.

 

However, the Court rules that the 'same cause of action' no longer exists when the actions in question no longer relate to an alleged infringement of a national trade mark and an identical EU trade mark in the territory of the same Member States, because of a partial withdrawal by an applicant, provided that it was properly declared, of an action for infringement on the basis of an EU trade mark seeking initially to prohibit the use of that trade mark in the territory of the European Union.

 

Finally, the Court finds that it is clear from the wording of Article 109(1)(a) of the EU Trade Mark Regulation that that provision applies ‘where the trade marks concerned are identical and valid for identical goods or services’. It follows that the court other than the court first seised must, where the EU trade mark and the national trade mark are identical, decline jurisdiction in favour of the court first seised only in so far as those trade marks are valid for identical goods or services.

 

IPPT20171019, CJEU, Merck v Merck

 

C‑231/16 - ECLI:EU:C:2017:771