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Arbitrating CTM disputes: a reader asks ...
Article 96 of Community Trade Mark Regulation 207/2009 provides that the Community trade mark courts shall have exclusive jurisdiction (a) for all infringement actions and, if they are permitted under national law, actions in respect of threatened infringement relating to Community trade marks; (b) for actions for declaration of non-infringement, if they are permitted under national law; (c) for all actions brought as a result of acts referred to in Article 9(3), second sentence; (d) for counterclaims for revocation or for a declaration of invalidity of the Community trade mark pursuant to Article 100.
Question 1: Does this mean that the parties are not allowed to conclude an arbitration agreement and proceed to an arbitration court with regard to a CTM infringement? -
Question 2: Do arbitration courts/authorites decide matters under Article 96 of the CTMR in any Member States?
We'd very much appreciate your answers and comments on these issues. Please post them below!
For what it's worth (and I'm happy to be proven wrong), my own understanding was that Article 96 does not interfere with the right of parties to a dispute to take that dispute to an arbitral body, but merely establishes that, as between different courts, it is the Community trade mark courts and not, eg, a general commercial court, to determine the issues. It is also my understanding that no decision made by an arbitrator regarding issues such as revocation and invalidity will be binding upon OHIM, any national office or any third party, but that -- if such a decision has any effect at all -- it is only as between the parties to the arbitration.
Posted by: Blog Administrator @ 09.03Tags: CTM jurisdiction, arbitration,
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03 August 2010 @ 16.46
Interesting issues. If you follow the wording of art. 96 CTMR arbitration is a nono with regard to the listed actions and counterclaims. Suppose that these actions and counterclaims are the object of regulation in an agreement. If the agreement contains an arbitration clause, the first question to be answered by a judge will be: is the claim covered by the arbitration clause? If that's the case it is most likely (although depending on national law) that the judge denies jurisdiction unless the action or counterclaim is covered by a legal provision that does not allow arbitration for such action/counterclaim. An example can be derived from art. 24 and art. 22 of Regulation (EC) No 44/2001: a choice of forum which is contrary to the exclusive jurisdiction provisions of art. 22 (to be short: for the validity of a trade mark only the courts in the state of registration have jurisdiction) has no legal effect. Within the framework of 44/2001 the exclusive jurisdiction of art. 22 can not be mitigated: only the courts in the state of registration have jurisdiction to decide an action for invalidity. Other courts have an obligation to obstain from such an action. Accordingly there is a clear majority opinion holding that an action for invalidity can not be decided by arbitration, which opinion is also extended to the special jurisdiction regulation embedded in the CTMR. Invalidity is in other words an issue which within the framework of CTMR can be decided only by OHIM (unless this issue is already decided as a counterclaim by a community trade mark court).
03 August 2010 @ 18.20
It is indeed a hot topic in web domain name cases. They are by default decided in ADR proceedings and at least some of them are proper arbitration proceedings. By way of example, cases regarding domains .pl (ie Polish ccTLD) where at least one of the parties is a Polish resident are solved by one of two arbitration courts in Poland indicated by the ccTLD registrar NASK. The issue is that often a domain name infringes a CTM - so may such cases be decided by ADR at all? In my view, Art 96 of current CTMR refers to exclusive jurisdiction of national CTM courts in CTM matters only as among national common courts, but does not preclude the parties from signing an arbitration clause with regard to the question of alleged infringement eg. by web domain registration. The ability of the parties to refer a matter to arbitration should prevail. However, to my knowledge, at least some of the domain name arbiters in Poland expressed contrary views.
04 August 2010 @ 10.58
Additional comment for the Benelux. The Benelux Convention on Intellectual Property contains a provision (art. 4.5) that only the courts shall have jurisdiction to rule upon actions brought on the grounds of this Convention. A provision that can be easily overlooked. Accordingly arbitration with regard to a Benelux trade mark would not be possible for actions regarding validity and infringement.
04 August 2010 @ 22.27
This comment has been posted on behalf of Trevor Cook (Bird & Bird): Most national jurisdictions will have, somewhere in their laws, a provision such as Article 96 of Regulation 207/2009, but I agree with you that such provisions do not affect agreements to arbitrate such IPRs, or, as between the parties to such agreements only, the consequences of an arbitration in which the validity and infringement of an IPR such as a trade mark have been in issue. A similar situation exists for patents, as to the "arbitrability " of which there was, at one time, much written, little of which however distinguished between the effect of an arbitral award as between the parties and its effect on the public register and on third parties. That said, a few jurisdictions, such as Belgium (Article 51 of the Patents Law 1984) expressly recognise the effect of an arbitration award finding a patent invalid, but I am aware of no such provision anywhere for trade marks. The reality however is that trade mark disputes do get arbitrated - for example disregarding domain name disputes, 9% of the disputes that the WIPO Arbitration and Mediation Center have administered concern trade marks (although 44% concern patents) - see http://www.wipo.int/amc/en/center/caseload.html. Trade marks are also arbitrated in ad-hoc arbitrations, or in arbitrations administered by other arbitral institutes, but these other institutes do not break out IP statistics. Alejandro Garcia and I address some of these issues in our forthcoming book for Kluwer on International Intellectual Property Arbitration.
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