In an interlocutory decision in a combined copyright and trade mark case regarding the so-called Elwood jeans between G-Star and H&M the Court of Appeal The Hague (Tanja-van den Broek, Bonneur, Schaafsma) decided that the jurisdiction rules laid down in Brussels I prevail over article 4.6 of the Benelux Convention on Intellectual Property (BCIP). Article 4.6 BCIP contains jurisdictional rules concerning disputes over Benelux trade mark rights. H&M had requested the Court to consider this matter explicitly and, in so far as necessary, to refer questions of interpretation to the CJEU and/or the Benelux Court of Justice. According to the Court of Appeal both Brussels I and BCIP are applicable to the trade mark matter and accordingly a concurrence between Brussels I and BCIP occurs. Such a concurrence should be resolved - decided the Court of Appeal - by applying article 71 of Brussels I which stipulates that Brussels I does not affect any conventions to which the Member States are parties and which, in relation to particular matters, govern jurisdiction or the recognition or enforcement of judgements. The Court of Appeal finds, however, that this provision does only apply to anterior conventions for such particular matters and not to posterior conventions as the BCIP is. Accordingly, the Court of Appeal decides that art. 4.6 of the BCIP is not a convention in relation to a particular matter governed by article 71 of Brussels I. Therefore the Court of Appeals finds that the jurisdiction rules of Brussels I prevail over those of art. 4.6 BCIP. The Court of Appeal saw no grounds for referring questions of interpretation.
In an interlocutory decision of July 30, 2014, the District Court The Hague (De Heij), a court of first instance, seems to be of another opinion and considers to refer questions of interpretation to the CJ EU and/or the Benelux Court of Justice.
The claimants in this case, FKP and FGUP, are the proprietors of, inter alia, the trade marks Stolichnaya, Moskovskaya and SPI for vodka, which are registered in various EU countries (not in the Benelux). On the basis of alleged trade mark infringement, FKP and FGUP issued proceedings before the District Court The Hague against Spirits International B.V. (seated in the court district Rotterdam) and Spirits Product International Intellectual Property B.V. (seated in the court district The Hague), SPI Spirits (Cyprus) Limited and Zao Sojuzplodimport (‘Spirits et al’). The latter two companies have their registered seat in Cyprus and Russia respectively. Spirits et al markets vodka using signs identical to the trade marks of FKP and FGUP.
In addition to these proceedings, FKP had also started proceedings against Spirits International B.V. before the District Court Rotterdam concerning alleged infringement of FKP’s trade mark registrations with validity in the Benelux.
According to FKP and FGUP, the District Court The Hague has jurisdiction on the basis of, inter alia, article 6(1) Brussels I, which determines that in case there is more than one defendant, a defendant may also be sued in the courts of the place where any one of the defendants is domiciled, provided the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings. Hence, FKP and FGUP assert that because Spirits Product International Intellectual Property B.V. has its registered seat in the court district The Hague and the claims are closely connected in the meaning of article 6(1) Brussels I, the District Court The Hague has jurisdiction regarding all four defendants.
Spirit International B.V., on the other hand, claims that jurisdiction should be determined on the basis of article 22(4) Brussels I and 4.6(1) BCIP. Article 22(4) Brussels I regulates that in proceedings concerning the registration or validity of registered intellectual property rights, the courts of the Member State where the registration has been applied for has exclusive jurisdiction. Article 4.6(1) BCIP furthermore determines that the court of the place where the defendant is domiciled has national jurisdiction. In addition, it follows from article 4.6(5) BCIP that, upon request of one of the parties, in case of association between disputes, the associated disputes shall be referred to the first court to which an action was initially brought. As a result of the earlier proceedings FKP issued against Spirit International B.V. concerning trade mark registrations, in which the District Court Rotterdam has jurisdiction, the District Court Rotterdam should, according to Spirit International B.V., have exclusive jurisdiction in the current proceedings on the basis of article 22(4) and 4.6 BCIP.
The District Court, in assessing the parties’ arguments, determines that there is no close connection between the different claims from FKP and FGUP as required in 6(1) Brussels I. There is, however, association between the disputes as required by article 4.6(5) BCIP.
Notwithstanding these determinations, the District Court wonders which provisions to apply in order to establish jurisdiction. According to the Court, in the light of the arguments put forward by the parties in this case, as well as the ruling of the Court of Appeal The Hague in the case between G-Star and H&M, a number of questions arise concerning the laws to be applied in order to determine jurisdictions.
The Court formulates five questions regarding the interpretation of Brussels I and BCIP, of which the first concerns the question whether Brussels I prevails over BCIP.
The District Court The Hague considers referring questions of interpretation to the CJEU or Benelux Court of Justice. Before taking a decision on this point, the parties are first offered the opportunity to express their opinion as to whether the referral of questions of interpretation is necessary and, if yes, to which court such questions should be referred.
In this light, it should be noted that courts must ex officio determine jurisdiction on the basis of article 4.6 BCIP, in case this provision applies. Hence, on the basis of this article, a court must determine on its own account on which ground it has (or has no) jurisdiction.
Written by Denise Verdoold and Gino van Roeyen