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*PIL Case Law

Published on December 11th, 2017 | by efi kloyeri

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Summary: CJEU, C-341/2016-Proceedings to determine whether a person was correctly registered as the proprietor of a trade mark

Key-words: Reference for a preliminary ruling- Regulation (EC) No 44/2001Article 2(1)- Jurisdiction of the courts of the place where the defendant is domiciled- Article 22(4)- Exclusive jurisdiction in proceedings concerned with the registration or validity of intellectual property rights- Proceedings to determine whether a person was correctly registered as the proprietor of a trade mark

Case Number: C-341/2016

 Court of Justice of the European Union

 Eftihia-Angie Klogkiri

 A: The facts in the main proceedings and the question referred

 In 1979, a German company, owned by Mr Helmut Knipping, operating in the production of building components, applied to the Benelux Intellectual Property Office (Trade Marks and Designs) (BIPO) for registration of a Benelux trade mark. BIPO registered that trade mark under the No 361604. Hanssen, a Dutch company, operating in the same field as the former, is the proprietor of Benelux word and figurative trade mark No 0684759. That trade mark is comprised of the same word and figurative sign as that covered by trade mark No 361604, but is registered in different colours. After the death of H. Knipping, Ms Prast-Knipping as the sole heiress of Mr Knipping, requested BIPO to register her as the proprietor of the trade mark No 361604. BIPO complied with the request for registration. Hanssen contested the registration claiming that it was legally unjustified.

In 2012 Hanssen brought an action against Ms Prast-Knipping before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany), the court of the place where Ms Prast-Knipping is domiciled. After that action was dismissed, Hanssen brought an appeal before the Oberlandesgericht Düsseldorf (Higher Regional Court). That court harboured doubts as to the 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 — namely the Netherlands, since the seat of BIPO is located at The Hague — have exclusive jurisdiction under Article 22(4) of that regulation.

Under those circumstances, the Oberlandesgericht Düsseldorf decided to refer the following question to the Court of Justice for a preliminary ruling:

‘Does the notion of proceedings which are “concerned with the registration or validity of … trade marks”, within the meaning of Article 22(4) of Regulation No 44/2001, also cover a claim, brought against the formal proprietor of a Benelux trade mark registered in the Benelux trade mark register, which seeks an order requiring that defendant to make a declaration to (BIPO) that she has no entitlement to the contested mark and that she waives registration as the proprietor of that mark?

B. Legal Context

Article 2(1) of the Regulation No 44/2001 regarding the Jurisdiction of the courts of the place where the defendant is domiciled, as well as the article 22 of the same Regulation, regarding the exclusive international jurisdiction

 C. Consideration of the question referred

 Firstly, the CJEU has already held that Article 22(4) of Regulation No 44/2001 reflects the same system as Article 16(4) of the Brussels Convention and is, moreover, drafted in almost identical terms so that it is necessary to ensure continuity in the interpretation of those provisions. Moreover, the concept of proceedings “concerned with the registration or validity of (intellectual property rights)”, referred to in those provisions is an ‘independent concept’ intended to have uniform application in all contracting States.

The Court has, also held that provisions which confer exclusive jurisdiction, such as Article 16 of the Brussels Convention and Article 22 of Regulation No 44/2001, must not be given a wider interpretation than is required by their objective, since they deprive the parties of the choice of forum which would otherwise be theirs.

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.

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. 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.

The Court clarified as well the relationship between the rule of jurisdiction set out in Paragraph 4.6 of the BCIP and that laid down in Article 22(4) of Regulation No 44/2001, and came to the conclusion that the case in the main proceedings does not concern the registration or the validity of the Benelux trade mark in question or any potential infringement of that trade mark.

On those grounds, the Court hereby stated that:

The 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.

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