Case C-231/16, Merck KGaA – a murky issue of jurisdiction

When a company starts to sue a group of companies for infringing its trade mark in one Member State but then sees them infringing its mark in a second Member State, can the company commence proceedings in the second state too? Or is the court in the second Member State stopped from hearing the case by dint of the barring phrase, ‘the same cause of action’, which is in Article 109(1)(a) of the EU’s ‘trade mark’ Regulation 207/2009?

Background
Merck KGaA is a pharmaceutical company. Based in Germany, the company has 40 000 employees. However, it is also a global company for it trades in 67 countries.

Curiously, the word ‘Merck’ is found in the name of other global pharmaceutical companies. For example, there is a distinct group of pharmaceutical companies of American origin that trade variously under the names of Merck & Co, Merck Sharp & Dohme Corp, and MSD Sharp & Dohme GmbH. This American group has twice as many employees as Merck KGaA and it also trades in twice as many countries.

The problem for Merck KGaA is that the American group has an internet presence. The American group uses it to describe its products, uses it in its branding, uses it in its  branding and in their promotional materials, it uses it in their recruitment activities, on their many websites, and in their domain names, and in the social media which they distribute via globally platforms such as Facebook, Twitter and YouTube

Since the websites and social media of Merck & Co are accessible by anyone from anywhere in the world, the word Merck may be being used by the American group at the expense of Merck KGaA.

Fortunately for Merck KGaA, it owns the EU, English and German trademarks on the word ‘MERCK’. Of late, it has tried to assert its rights in trade mark law to stop the American Merck group, and its European subsidiaries, from using the word ‘MERCK’ outside of American and Canada in products, promotional materials, websites and social media.

As an opening gambit, Merck KGaA began by hauling its rivals before the English courts, claiming that its English trade mark was being infringed. Subsequently, Merck KGaA then went one step further; it dragged its rivals before the German courts and claimed infringement of its German trade mark.

However, this German litigation generated a procedural question: since Merck KGaA was already busy suing the rivals in the English courts, was the German court even competent to hear the German case?

The answer seemed to depend on the interpretation which was to be given to the rules in the EU’s ‘trade mark’ Regulation 207/2009. Section 1 of the Regulation governs ‘Civil actions on the basis of more than one trade mark’, and Article 109 provides:

Simultaneous and successive civil actions on the basis of Community trade marks and national trade marks
1. 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 a Community 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;

b) the court other than the court first seized may stay its proceedings where the trade marks concerned are identical and valid for similar goods or services and where the trade marks concerned are similar and valid for identical or similar goods or services.

2. The court hearing an action for infringement on the basis of a Community trade mark shall reject the action if a final judgment on the merits has been given on the same cause of action and between the same parties on the basis of an identical national trade mark valid for identical goods or services.

3. The court hearing an action for infringement on the basis of a national trade mark shall reject the action if a final judgment on the merits has been given on the same cause of action and between the same parties on the basis of an identical Community trade mark valid for identical goods or services.

4. Paragraphs 1, 2 and 3 shall not apply in respect of provisional, including protective, measures.

Basically, the answer depended on what should properly be understood by the phrase ‘the same cause of action’ in Articles 1(a) and (b).

Judge Zöllner and two others who were hearing the case at Hamburg’s Landgericht were uncertain what to do in a situation in which the German court was being asked to determine a case about a national trade mark in German law and the EU word mark on ‘MERCK’ but an English court was dealing with infringement of the English trade mark on the word ‘MERCK’.

Without any CJEU case law to guide them, the German judges drafted some fact-rich, intricate questions for the CJEU to answer.

Questions Referred
According to the UK IPO’s website, the Landgericht Hamburg has asked:

1. Must the term ‘same cause of action’ in Article 109(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark be interpreted as applying to the maintenance and use of a worldwide, and therefore also EU-wide, identical online internet presence under the same domain name, on account of which actions for infringement between the same parties have been brought before the courts of different Member States, one action being for infringement of an EU trade mark and the other being for infringement of a national trade mark?

2. Must the term ‘same cause of action’ in Article 109(1)(a) of Regulation No 207/2009 be interpreted as applying to the maintenance and use of worldwide, and therefore also EU-wide, identical online content on the internet domain names ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’, in each case – as regards the relevant domain names ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’ – under the same username, on account of which actions for infringement between the same parties have been brought before the courts of different Member States, one action being for infringement of an EU trade mark and the other being for infringement of a national trade mark?

3. Must Article 109(1)(a) of Regulation No 207/2009 be interpreted as meaning that when a ‘court other than the court first seised’ of a Member State is seised of an ‘action for infringement’ of an EU trade mark through the maintenance of a worldwide, and therefore also EU-wide, identical online website under the same domain name, and claims have been put forward to it under Article 97(2) and Article 98(1)(a) of Regulation No 207/2009 in relation to acts of infringement committed or threatened within the territory of any of the Member States, it must decline jurisdiction under Article 109(1)(a) of Regulation No 207/2009 only for the territory of the other Member State in which a court had been ‘first’ seised of a claim for infringement of a national trade mark (which is identical to and covers identical goods as the EU trade mark asserted before the ‘court other than the court first seised’) through the maintenance and use of the same worldwide, and therefore also EU-wide, identical online internet presence under the same domain name, to the extent that both the marks themselves and the goods and services covered are identical, or, in such a situation, must the ‘court other than the court first seised’, to the extent that both the marks themselves and the goods and services covered are identical, decline jurisdiction with regard to all claims put forward before it under Article 97(2) and Article 98(1)(a) of Regulation No 207/2009 in relation to acts of infringement committed or threatened within the territory of any of the Member States and therefore in relation to EU-wide claims?

4. Must Article 109(1)(a) of Regulation No 207/2009 be interpreted as meaning that when a ‘court other than the court first seised’ of a Member State is seised of an ‘action for infringement’ of an EU trade mark on account of the maintenance of worldwide, and therefore also EU-wide, identical online content on the internet domain names ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’, each – as regards the relevant domain names of ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’ – under the same username, and claims have been put forward to it under Article 97(2) and Article 98(1)(a) of Regulation No 207/2009 in relation to acts of infringement committed or threatened within the territory of any of the Member States, it must decline jurisdiction under Article 109(1)(a) of Regulation No 207/2009 only for the territory of the other Member State in which a court was ‘first’ seised of a claim for infringement of a national trade mark (which is identical to and covers identical goods as the EU trade mark asserted before the ‘court other than the court first seised’) through the maintenance and use of the same worldwide, and therefore also EU-wide, identical online content on the internet domain names ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’, each – as regards the relevant domain names ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’ – under the same username, to the extent that both the marks themselves and the goods and services covered are identical, or in such a situation must the ‘court other than the court first seised’, to the extent that the marks themselves and the goods and services covered are identical, decline jurisdiction with regard to all claims put before it under Article 97(2) and Article 98(1)(a) of Regulation No 207/2009 in relation to the acts of infringement committed or threatened within the territory of any of the Member States and therefore in relation to EU-wide claims?

5. Must Article 109(1)(a) of Regulation No 207/2009 be interpreted as meaning that the withdrawal of an action –– brought before the ‘court other than the court first seised’ of a Member State, for infringement of an EU trade mark infringement through the maintenance of a worldwide, and therefore also an EU-wide, identical online internet presence under the same domain name, in which claims had initially been put forward under Article 97(2) and Article 98(1)(a) of Regulation No 207/2009 in relation to acts of infringement committed or threatened within the territory of any of the Member States –– in relation to the territory of the other Member State in which a court was ‘first seised’ of a claim for infringement of a national trade mark (that is identical to and covers identical goods as an EU trade mark asserted at the ‘court other than the court first seised’) through the maintenance and use of the same worldwide, and therefore also EU-wide, identical online internet presence under the same domain name, precludes a declining of jurisdiction by the ‘court other than the court first seised’ under Article 109(1)(a) of Regulation No 207/2009 to the extent that the marks themselves and the goods and services covered by the marks are identical?

6. Must Article 109(1)(a) of Regulation No 207/2009 be interpreted as meaning that the withdrawal of an action –– brought before a ‘court other than the court first seised’ of a Member State, on account of infringement of an EU trade mark through the maintenance of worldwide, and therefore also EU-wide, identical online content of the internet domain names ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’, each – as regards the relevant domain names ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’ – under the same username, with which claims had initially been made under Article 97(2) and Article 98(1)(a) of Regulation No 207/2009 in relation to acts of infringement committed or threatened within the territory of any of the Member States –– in relation to the territory of the other Member State in which a court was first seised of a claim for infringement of a national mark (that is identical to and covers identical goods as an EU trade mark asserted at the ‘court other than the court first seised’) through the maintenance and use of the same worldwide, and therefore also EU-wide, identical online content on the internet domain names ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’, each – as regards the relevant domain names of ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’ – under the same username, precludes a declining of jurisdiction by the ‘court other than the court first seised’ under Article 109(1)(a) of Regulation No 207/2009 to the extent that the marks themselves and the goods and services covered by the marks are identical?

7. Must Article 109(1)(a) of Regulation No 207/2009 be interpreted as meaning that it follows from the wording ‘where the trade marks concerned are identical and valid for identical goods or services’ that, in a situation where the marks are identical, the ‘court other than the court first seised’ is without jurisdiction only in so far as the EU trade mark and the earlier national trade mark are registered for the same goods and/or services, or is the ‘court other than the court first seised’ entirely without jurisdiction, even when the EU trade mark asserted before that court also protects additional goods and/or services that are not protected by the other national mark, for which the contested acts may be identical or similar?

Comment
The German court’s referring order dates from April 2016. It mentions that in 2013 Merck KGaA had lodged proceedings in the courts of Great Britain and Northern Ireland. No further mention is made of the litigation. However, this could be the ‘Merck’ litigation which was heard in the Patent Court in the April of 2015, and which now forms the object of Mr Justice Norris’ recent 30 000-word judgment in Merck KGaA v. Merck & Co ([2016] EWHC 49 (Pat)).