When a trade mark register indicates the formal owner of a mark but another person then claims to be the owner, where can that person litigate to challenge the registration? Is it only in the courts where the formal owner is domiciled? Or is it in the courts of the Member State that hosts the registry?
In 1979, a person applied for a Benelux trade mark. On his death, his sole heir asked the Benelux Intellectual Property Office (the BOIP) to transfer the registration into her name. The BOIP duly did so in 2003.
Since then the mark has been the subject of various commercial deals, and alleged ownership of the mark is now said to be in the hands of a Dutch investment company known as Hanssen Beleggingen.
The Dutch investment company has a problem, however. The mark still remains registered in the name of the heir. Consequently, the company has asked the heir to write to the BOIP informing them that she no longer has any claim over the mark, and that the mark should no longer be registered in her name. The heir has refused to accede to the Dutch investment company’s demands.
The heir has now been forced to appear in her local court, which is in Germany. At first instance, the German court found for the heir under each of the various heads of claim. Dissatisfied, the Dutch investment company appealed to the Oberlandesgericht Düsseldorf.
At the Oberlandesgericht Düsseldorf
The substance of the appeal has not yet been considered by the Oberlandesgericht Düsseldorf. The reason why the deliberations did not get out of the starting blocks was because the court wondered if it was even allowed to hear the case – and there was no clear answer offered by existing EU law.
That is to say, the German court took as its starting point the EU’s procedural laws on jurisdiction, as enshrined in Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters [OJ  L12/1].
Under that legislation, a court can hear some disputes irrespective of where parties live providing that the matter falls within the concept of ‘exclusive jurisdiction’.
The rules on exclusive jurisdiction are in Article 22 of the Regulation. The relevant rule in this case is Article 22(4), which provides:
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.
Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on 5 October 1973, the courts of each Member State shall have exclusive jurisdiction, regardless of domicile, in proceedings concerned with the registration or validity of any European patent granted for that State;
In light of that wording, the issue troubling the German court was this. If disputes about the registration or validity of trade marks fall within the concept of exclusive jurisdiction, then a court should not decide jurisdiction on the basis of where a particular party is domiciled. Instead, the court which should have jurisdiction should be in the country which hosts the relevant registry. Applied here, that would be the Dutch courts because the BOIP is in the Dutch city of The Hague.
Adding to the legal uncertainty was the current development of EU law. For while the issue of abusive patent registrations had already been discussed by the CJEU in C-288/82 Duijnstee; it was just not clear whether the topic of an abusive registration now fell within the scope of the exclusive jurisdiction rule in Article 22(4). Given the difficulties with the CJEU’s ruling in Duijnstee it was unclear whether, and if so how, it should apply by analogy to this case about trade mark law.
Private international law commentary also tended to support the notion that an abusive registration was not within the scope of Article 22(4) of the Regulation (the Oberlandesgericht Düsseldorf referred to a welter of German legal commentary including that of the well-knonwn ‘Münchener Kommentar-Gottwald, ZPO, 4. Aufl., Art. 22 EuGVVO, number 36).
And most recently, the CJEU has apparently refused to clarify the matter of the scope of Article 22(4). On the one hand, there was a hint in Advocate General Saugmandsgaard Øe’s Benelux-law ‘Brite Strike’ Opinion that the Dutch courts would not enjoy exclusive international competence.
On the other hand, there was no certainty of this because of the CJEU’s judgment in Case C-175/15, Taser International Inc. ECLI:EU:C:2016:176. For despite having been asked expressly by the Romanian courts about the application and scope of Article 22(4), the CJEU had left the matter ‘open’. That is to say, the CJEU had reasoned:
28 However, in the circumstances of the main proceedings, it is not necessary to determine whether a request for the enforcement of the contractual obligation to assign trade marks actually falls within Article 22(4) of Regulation No 44/2001, since the Romanian courts have, in any event, jurisdiction to decide this case. On the assumption that Article 22(4) is applicable to this dispute, the courts whose jurisdiction stems from that provision are the same as those whose jurisdiction is determined pursuant to the first sentence of Article 24 of that regulation, as the defendant in the main proceedings entered an appearance before the Romanian courts without challenging their jurisdiction.
Accordingly, the Oberlandesgericht Düsseldorf decided to make a preliminary reference to the CJEU.
According to the website of the UK’s Intellectual Property Office, the Oberlandesgericht Düsseldorf has asked:
Does the notion of proceedings which are ‘concerned with the registration or validity of … trade marks’, within the meaning of 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, 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 the Benelux trade mark office that she has no entitlement to the contested mark and that she waives registration as the proprietor of that mark?
Is it possible that the CJEU would look at its so very recent judgment in Taser International and duck the issue once again? After all, the Oberlandesgericht Düsseldorf opens its preliminary reference in Hanssen Beleggingen by recording the fact that at first instance the heir had not contested the jurisdiction of the Landgericht in Düsseldorf.
In any event, the Oberlandesgericht Düsseldorf seems particularly enthusiastic to encourage the CJEU to develop EU law when it comes to IP law cases with a jurisdictional dimension. In 2015, the Oberlandesgericht Düsseldorf referred Case C-617/15, Hummel Holding – international jurisdiction and Community trade mark law and Case C-419/15, Thomas Philipps – licensees and standing; and in 2016, it has already referred Case C-24/16, Nintendo – jurisdiction by design.
Update – 3 September 2016
There is a further preliminary reference pending at the CJEU about the ownership of a trade mark, Case C-381/16, Torras Ferrazzuolo. According to the website of the UK’s Intellectual Property Office, the question is:
Is the claim for the recovery of ownership of a Community trade mark on grounds other than those set out in Article 18 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark and, in particular, in accordance with the cases provided for in Article 2(2) of Spanish Law 17 of 7 December 2001 on Trade Marks (BOE No 294 of 8 December 2001), compatible with EU law and in particular with that regulation?