Opinion A-G ECJ concerning exclusive jurisdiction of article 22(4) Brussel I

Case C-341/16: Hanssen Beleggingen, preliminary ruling OBerlandesgericht Düsseldorf. Opinion A-G Saugmandsgaard Øe

Trade Mark Law. Litigation. The A-G concludes that an action (seeking an order requiring the person formally registered as proprietor of a Benelux mark to make a declaration to the competent authority that he has no entitlement to the mark and that he waives registration as the proprietor of that mark) doesn’t fall under the scope of article 22(4) of the Brussel I Regulation.

The first subparagraph of Article 22(4) of Brussels I, which appears in Section 6 of Chapter II entitled ‘Exclusive jurisdiction’, provides that the following courts shall have exclusive jurisdiction, regardless of domicile: ‘in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered’, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of a Community instrument or an international convention deemed to have taken place.

The A-G refers in this opinion to the Duijnstee-case (IPPT19831115, ECJ, Duijnstee v Goderbauer). That judgment, which involves proceedings similar to the main proceedings in this case, is of critical relevance here. In that case the Court stated that the exclusive jurisdiction in proceedings concerned with the registration or validity of patents conferred upon the courts of the contracting State in which the deposit or registration has been applied for or taken place is justified by the fact that those courts are best placed to adjudicate on cases in which the dispute itself concerns the validity of the patent or the existence of the deposit or registration. At the conclusion of its reasoning, the Court found in the Duijnstee-case that in that case it concerned neither the validity nor registration of the disputed patents and was confined to the question who was entitled to the patent, which had to be determined on the basis of the legal relationship existing between the parties concerned.

According to the A-G there are four reasons to apply that case to the current case:

1. In the light of the high degree of similarity between Article 22(4) of Brussels I and Article 16(4) of the Brussels Convention, it is necessary to ensure continuity in the interpretation of those two provisions, in accordance with recital 19 of Brussels I. Indeed, Article 22(4) of Brussels I reflects the same system as Article 16(4) of the Brussels Convention and is, moreover, drafted in almost identical terms. According to settled case-law, the interpretation provided by the Court in respect of the provisions of the Brussels Convention is also valid for those of Brussels I whenever the provisions of those instruments may be regarded as equivalent.
2. In the second place, I see no reason not to extend the test established by the Court concerning patents in Duijnstee to proceedings concerning trade marks. The wording of Article 22(4) of Brussels I does not draw any distinction between proceedings concerned with patents and those concerned with trade marks. Furthermore, the concepts of validity, existence, lapse or an alleged right of priority by reason of an earlier deposit are also relevant to trade marks.
3. The instant case does not relate to the trade mark as such but to the identification of its proprietor, which is not concerned with the registration or validity of the trade mark within the meaning of Article 22(4) of Brussels I.
4. The aim of proximity pursued by Article 22(4) of Brussels I does not prevent the main proceedings falling within the scope of the exclusive jurisdiction rule laid down in that provision. The arguments under consideration in the main proceedings, which concern, in particular, the existence of unjust enrichment and the scope of agreements between private parties, is extraneous to the question of the validity or registration of the contested mark. Accordingly, the courts of the State in which the mark has been registered are best placed to adjudicate on such arguments.

Read the opinion here.