The CJEU decides that Article 22(4) Regulation No 44/2001 ("Brussels Regulation") does not apply to proceedings to determine whether a person was correctly registered as the proprietor of a trade mark.

Case reference: Hanssen Beleggingen BV vs Tanja Prast-Knipping (C-341/16) of  5 October 2017.

Background:

Article 22(4) Regulation No 44/2001 ("Brussels Regulation") provides that "The following courts shall have exclusive jurisdiction, regardless of domicile: …   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."   

The underlying question was whether a person, who was domiciled in Germany, and had been registered as the owner of a Benelux mark (after that mark had been transferred to them by universal succession after the original owner passed away) was entitled to the trade mark.

The Düsseldorf court asked: "Does the notion of proceedings which are 'concerned with the registration or validity of … trade marks', within the meaning of Article 22(4) [Brussels Regulation], also cover a claim, brought against the formal proprietor of a Benelux trade mark registered in the Benelux trade mark register [but which is domiciled in Germany], which seeks an order requiring that defendant to make a declaration to [the Benelux IPO] that she has no entitlement to the contested mark and that she waives registration as the proprietor of that mark?"

CJEU decision:

The CJEU held Article 22(4) Brussels Regulation did not allow for such an interpretation. The judges based this on the following considerations:

Article 22(4) Brussels Regulation reflects the same system as Article 16(4) of the Brussels Convention and was "drafted in almost identical terms" so that it was necessary to ensure continuity in the interpretation of these provisions (citing Solvay (C 616/10)).  Further, the "concept of proceedings ‘concerned with the registration or validity of [intellectual property rights]’, referred to in those provisions, is an ‘independent concept’ intended to have uniform application in all contracting States"; referring to Duijnstee, (288/82, sic) and GAT (C 4/03).

The CJEU explained that these provisions "must not be given a wider interpretation than is required by their objective", which is "to ensure that jurisdiction for proceedings concerned with the registration or validity of intellectual property rights rests with courts closely linked in fact and law to the register". Indeed, these "courts are best placed to adjudicate on cases where the validity of the right, or even the existence of the deposit or registration, is in dispute".

The CJEU concluded that this interpretation should also be applied in the case at hand since the "question of the individual estate to which an intellectual property right belongs is not, generally, closely linked in fact and law to the place where that right has been registered." In other words, the case to be decided by the referring Düsseldorf court did not concern the validity or registration of a trade mark but only whether the person registered as its owner was indeed the correct owner.

Comment

Important decision on jurisdiction; since jurisdiction must be assessed of the court’s own motion, the referring court, the Higher Regional Court of Düsseldorf, Germany, understandably wished the matter to be clarified.