Opinion A-G Szpunar on parallel actions based on EU and national trade marks

C-231/16, Merck v Merck, Opinion of A-G M. Szpunar. Prejudicial questions Landesgericht Hamburg.

Trade Mark Law - Procedural law

This case concerns the interpretation of article 109(1) of the EU trade mark regulation. It concerns two different actions for infringement brought before courts of different Member States. One action is based on a national trade mark, the other on the basis of an EU trade mark. According to Szpunar, the actions only partly coincide, namely to the extent of the territory of the Member State that the action was brought in. The court to which the action on the basis of an EU trade mark is brought should decline jurisdiction over the coinciding territories.In 98 of his opinion Szpunar concludes:

"98. In the light of the foregoing considerations, I propose that the Court should answer the questions referred for a preliminary ruling by the Landgericht Hamburg (Regional Court, Hamburg, Germany) as follows:

Article 109(1)(a) of Council Regulation No 207/2009 of 26 February 2009 on the EU trade mark must be interpreted as meaning that, where two actions for infringement are brought before courts of different Member States, the first on the basis of a national trade mark, concerning infringement within the territory of a Member State, and the second on the basis of an EU trade mark, concerning infringement in relation to the entire territory of the European Union, those actions coincide only partly, to the extent that they concern the territory of that Member State.

The EU trade mark court, where it is the second court seised, must of its own motion decline jurisdiction as regards the part of the action which concerns the territory common to both actions."

Read the full opinion here.