Published on December 27th, 2017 | by efi kloyeri0
Summary: CJEU, C-230/2015- Jurisdiction in disputes concerning Benelux trade marks and designs
Key-words: Judicial cooperation in civil matters-Regulation (EC) No 44/2001-Article 22(4)-Jurisdiction in intellectual property disputes-Article 71-Conventions concluded by the Member States on particular matters-Benelux Convention on Intellectual Property-Jurisdiction in disputes concerning Benelux trade marks and designs-Article 350 TFEU
Case Number: C-230/2015
Court of Justice of the European Union
A: The facts in the main proceedings
Brite Strike Technologies SA, a company established in Luxembourg belongs to a network distributing tactical illumination products, developed by the American company Brite Strike Technologies Inc. On 4-2-2010 the first filed the word sign ‘Brite Strike’ for the purposes of its registration as a Benelux mark.
On 2012, Brite Strike Technologies Inc. brought an action before the Rechtbank Den Haag (District Court, The Hague, Netherlands) seeking a declaration of invalidity in respect of that mark, in accordance with Articles 2.4 and 2.28 of the BCIP, because of bad faith, since Brite Strike Technologies SA acted with the sole intention of obtaining an exclusive right to use it and, thereby, prevent Brite Strike Technologies Inc. from continuing to use that sign itself in Benelux. Brite Strike Technologies SA raised an objection of lack of jurisdiction. It argued that the action should have been brought in Luxembourg and not in The Hague.
The Court, stated that if the rule of jurisdiction laid down in Article 4.6 of the BCIP were to be applied, that court would lack jurisdiction to adjudicate on the dispute. If, on the other hand, the rule of jurisdiction laid down in Article 22(4) of Regulation No 44/2001 were to prevail, that court might have jurisdiction.Therefore, the relationship between Regulation No 44/2001 and the BCIP should be examined.
B: The questions referred
1) Must BCIP (whether or not on the grounds set out in paragraphs 28 to 34 of the judgment of the Gerechtshof Den Haag (Regional Court of Appeal, The Hague) of 26 November 2013) be considered to be a subsequent convention, with the result that Article 4.6 of the BCIP cannot be considered to be a special rule for the purposes of Article 71 of Regulation No 44/2001?
If that question is answered in the affirmative:
2) Does it follow from Article 22(4) of Regulation No 44/2001 that the Belgian, Netherlands and Luxembourg courts all have international jurisdiction to take cognisance of the dispute?
3) If not, how should it be determined, in a case such as the present, whether the Belgian, Netherlands or Luxembourg courts have international jurisdiction? Can Article 4.6 of the BCIP (nonetheless) be applied with a view to (further) determining international jurisdiction?
C: Legal Context:
Article 71 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, and article 4.6 of the Benelux Convention on Intellectual Property (Trade Marks and Designs) of 25 February 2005, signed in The Hague by the Kingdom of Belgium, the Grand Duchy of Luxembourg and the Kingdom of the Netherlands.
D: Consideration of the questions referred
The first question:
The CJEU stated that in the light of the primacy enjoyed as a general rule by EU law with regard to conventions concluded between the Member States, the conventions between the Member States affecting the common rules of the EU are, in principle, prohibited.
In the present case, it must be determined whether the BCIP and that limitation are incompatible, which would have as a consequence that Article 71 of Regulation No 44/2001 does not authorize the application of Article 4.6 of the BCIP instead of Article 22(4) of that regulation.
The BCIP is an agreement concluded between the Kingdom of Belgium, the Grand Duchy of Luxembourg and the Kingdom of the Netherlands in the framework of their regional union, Benelux. Therefore, Article 71 of Regulation No 44/2001 must be interpreted in the light of Article 350 TFEU, which provides that EU law does not preclude the existence or completion of that regional union, in so far as the objectives it pursues are not attained by the application of EU law.
Having regard to the fact that Benelux trade marks and designs fall within a regime in the three Member States concerned which is in advance of the jurisdictional structure established by Benelux, based on a decentralised system and a mechanism for referring questions for a preliminary ruling to the Benelux Court of Justice and the multilingual character of that regional union, the codified rule in Article 4.6 of the BCIP, which is founded in particular on the defendant’s domicile and thereby ensures that the disputes relating to Benelux trade marks and designs may be dealt with, as the case may be, by a Belgian, Luxembourg, or Dutch court, instead of being concentrated, pursuant to Article 22(4) of Regulation No 44/2001 and then Article 24(4) of Regulation No 1215/2012, before the Dutch courts where the filing and registration of trade marks is centralised and the register is kept.
Therefore the Court established that the article 71 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, read in the light of Article 350 TFEU, does not preclude the application to those disputes of the rule of jurisdiction for disputes relating to Benelux trademarks and designs, laid down in Article 4.6 of the Benelux Convention on Intellectual Property (Trade Marks and Designs) of 25 February 2005, signed in The Hague by the Kingdom of Belgium, the Grand Duchy of Luxembourg and the Kingdom of the Netherlands.
The second and third questions:
In the light of the answer to the first question and the inapplicability of Article 22(4) of Regulation No 44/2001 which results from that, there is no need to respond to the second and third questions.
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