MONDAY, 6 JUNE 2016
Merck v Merck trade mark dispute heads for CJEU ruling

There's a huge new case heading for a preliminary ruling from the Court of Justice of the European Union (CJEU). It's Case C-231/16 Merck. The referring court is the Landgericht, Hamburg and the questions referred to the CJEU look like this:

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?

If you would like to comment on this case to the UK IPO so that it can advise the UK government whether to make representations, please email policy@ipo.gov.uk by 15 June 2016.

Posted by: Blog Administrator @ 10.26
Tags: CJEU reference, infringement,
Link: https://www.marques.org/class46?XID=BHA4380

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