Enforcement of Community and national trade marks in the EUnational trade marks in the EU

Chair: David Pellisé (ES)Speakers: F Peter Müller (DE)Speakers: F. Peter Müller (DE)

Anna Carboni (UK)

Legal Backgroundg gEnforcement in Practice

DiscussionDiscussionF. Peter MüllerMüller Schupfner & PartnerMunich, Germanywww.propat.de

I. Legal Background

1. Applicable Law

- Trade Mark Directive – national law- Community Trademark Regulation (CTMR)- Enforcement Directive – national law- Brussels Regulation- Lugano ConventionLugano Convention- National Law

1. Applicable Law

Decisions regarding the validity and infringement of community trade marks must have effect and cover the entire area of the Community, as this is the only way of preventing inconsistent decisions on the part of the courts and the Office and of ensuring that the unitary character of Community trade marks is not undermined. The provisions of Council R l ti (EC) N 44/2001 f 22 D b 2000 j i di ti d thRegulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (1) should apply to all actions at law relating to Community trade marks, save where this Regulation derogates from those Rules (Recital 16save where this Regulation derogates from those Rules. (Recital 16 CTMR)

1. Applicable Law

In the interests of the harmonious administration of justice it isnecessary to minimise the possibility of concurrent proceedingsand to ensure that irreconcilable judgments will not be given intwo Member States. There must be a clear and effectivemechanism for resolving cases of lis pendens and relatedmechanism for resolving cases of lis pendens and relatedactions and for obviating problems flowing from nationaldifferences as to the determination of the time when a case isregarded as pending. For the purposes of this Regulation thattime should be defined autonomously. (Recital 15 BrusselR)

1. Applicable Law

By virtue of the same principle of mutual trust, the procedure formaking enforceable in one Member State a judgment given inmaking enforceable in one Member State a judgment given inanother must be efficient and rapid. To that end, the declarationthat a judgment is enforceable should be issued virtually automatically

ft l f l h k f th d t li dafter purely formal checks of the documents supplied,without there being any possibility for the court to raise of itsown motion any of the grounds for non-enforcement provided forby this Regulation.(Recital 17 BrussselR)

(Art. 14 CTMR)

a. The effects of Community trade marks shall be governed solely by the provisions of the Regulation.

b. In other respects, infringement of a Community trade mark shall be governed by the national law relating to infringement of a national trade mark in accordance with the provisions of Title X of the Regulation.

(Title X)

Stipulates that unless otherwiseStipulates that, unless otherwise specified in the Regulation, the Brussels Regulation shall apply. (Art. 94 (1) CTMR + Art. 67 BrusselR)

(Title X)

Stipulates that, unless otherwise specified in the Regulation, National Law and Private International Law appliespp(Art. 14, 97, 101, 102 CTMR)

9 Golden Rules

1. CTMR comes first, then BrusselR (fori f i d lidi f CTM i l R linfringement and validity of CTM – special Rules - Art.96 CTMR), then National Law

2 B lR f i il ti ith i t ti l2. BrusselR for any civil actions with international extent (Art. 94, 108 CTMR)

3 Member States must designate minimum3. Member States must designate minimumnumber of CTM Courts, exclusive jurisdiction forinfringement and validity (Art. 95, 96 CTMR)g y ( , )

9 Golden Rules

4. Territorial Sanctions of CTM Courts depend on h i i i l j i di i (A 98 CTMR)their international jurisdiction (Art. 98 CTMR)

5. CTM Courts must accept validity of CTM unlessh ll d bj t d t N ti l C t tchallenged or objected to, National Courts must

always accept validity – other actions than Art. 96 CTMR (Art. 99, 106, 107 CTMR)96 CTMR (Art. 99, 106, 107 CTMR)

6. Validity of CTM can only be attacked at OHIM (orthrough challenge in infringement proceedings) g g g p g )(Art. 100 CTM)

9 Golden Rules

7. Injunction through CTMR but ancillary claims(d l i f i ) h h(damages, removal, information,..) throughNational Law (Art. 102 CTMR)

8 P li i M ( i i l d8. Preliminary Measures (provisional andprotective) – extended provisions and National Law (Art. 103 CTMR)Law (Art. 103 CTMR)

9. Related and simultaneous actions (exceptionsto BrusselR) based on national TMs and CTMs –)special Rules (Art. 103, 109 CTMR)

MissingProvisions on Ancillary ClaimsProvisions on Ancillary ClaimsProvisions on Criminal SanctionsProvisions on Custom MeasuresProvisions on Custom Measures

B t E f t Di tiBut: Enforcement Directive(Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights)of 29 April 2004 on the enforcement of intellectual property rights)

Border Measures Regulation(Council Regulation (EC) No. 1383/2003 of 22 July 2003)

II. Enforcement in practice: Example 1

A, having a seat in France and being owner of a registered CTMthreatens to sue B, having a seat in Germany, because of an infringement of such CTM in Italy.

A could sue B in Germany Community wide injunction (Art 97 (1)A could sue B in Germany – Community wide injunction (Art. 97 (1) + 98 CTMR) or in Italy (forum delicti) Art. 97 (5) + 98 CTMR

But: B sues A for obtaining a negative declaration – only in Francepossible (Art. 97 (5) CTMR), then A cannot go anywhere else (Art. 27 BrusselR = same cause of action, same parties)

DE: If A had a seat in Germany B must sue A in Germany and ADE: If A had a seat in Germany, B must sue A in Germany and A could go to another court in Germany and the first court has to seize the proceedings

II. Enforcement in practice: Example 2

A, having a seat in France and being owner of a registered CTMthreatens to sue B having a seat in Germanythreatens to sue B, having a seat in Germany, because of an infringement of such CTM in Italy.

A sues B in Germany – Community wide injunction (Art. 97 (1) + 98 CTMR) and later in Italy (forum delicti) Art. 97 (5) + 98 CTMRCTMR

Italian Court has to dismiss the case, if later (Art. 27 BrusselR = same cause of action, same parties)

II. Enforcement in practice: Example 3 (Rodeo-Case)

A, having a seat in France and being owner of a registered CTMsues B having a seat in Francesues B, having a seat in France, because of an infringement of such CTM in France and other

countries, asking for an injunction in France

and A, sues B in parallel in Germany

French Court has jurisdiction:

A – Community wide jurisdiction acc. Art. 97 (1) – (4) , 98 CTMR –cascade of jurisdictions

B – French jurisdiction (because of infringement in France) acc.Art. 97 (5) CTMR

Plaintiff has the choice

German Court has jurisdiction:

B – German jurisdiction (because of infringement in Germany) acc.Art. 97 (5) CTMR

?? Art. 27 BrusselR ?? SAME CAUSE OF ACTION ??? Art. 28 BrusselR ?? RELATED CAUSE OF ACTION ?

Plaintiff has no choice but can lounge separate action

II. Enforcement in practice: Example 2*

A, having a seat in France and being owner of a registered CTMthreatens to sue B having a seat in Germanythreatens to sue B, having a seat in Germany, because of an infringement of such CTM in Italy.

A sues B in Germany – Community wide injunction (Art. 97 (1) + 98 CTMR) and in Italy (forum delicti) Art. 97 (5) + 98 CTMR

NO: Italian Court has to dismiss the case if later (Art 27 BrusselRNO: Italian Court has to dismiss the case, if later (Art. 27 BrusselR = same cause of action, same parties)

BUT: If Italian Court was first, is the German Court obliged to dismiss the case?

II. Enforcement in practice: Example 3* ( t R h N d l d“)(not „Roche Nederland“)

A h i t i F d b i f i t d CTMA, having a seat in France and being owner of a registered CTMsues B, having a seat in France,

C, having a seat in Germany andC, having a seat in Germany andD, having a seat in the US

all before a court in Germany because of an infringement of such CTM in France and other countries, asking for community wide injunction (Art. 6 (1) BrusselR)

But: what happens if B is the producer and C is the whole saler ?

II. Enforcement in practice: 4th Example

A, having a seat in the US and being owner of a registered CTMsues B having a seat in Switzerlandsues B, having a seat in Switzerland, because of an infringement of a CTM in Germany and the UK and

requests a Community wide injunction.

B objects to the jurisdiction of the Swiss Court and challenges the validity of the CTM precautionallyvalidity of the CTM precautionally

Deviation from BrusselR:

Art. 94 (2) b + 97 (4) CTMR stipulates that Art. 23, 24 BrusselR(Prorogation of jurisdiction and defendant enters an(Prorogation of jurisdiction and defendant enters anappearance ) apply only if the Court upon which the parties agreed or before which the defendant appeared is a Community trademark courty

According to BrusselR:

In all other aspects, BrusselR is applicable ! (Art. 94 (1) CTMR),

Hence: National Court has jurisdiction

But: Switzerland is not a member of the EU, ,CTMR and BrusselR are not applicable

According to Lugano Convention:

EU countries (16 old member states or (since Oct 30 2007EU countries (16 old member states or (since Oct 30, 2007, to be enforced in 2011) and 3 EFTA countries (Switzerland,Norway, Island) – basically in line with BrusselsR

- No Rules which stops CH Court to rule on CTM matters- Art 96 CTMR not applicable, so CH Court can rule

on infringement alsoon infringement also- Decision enforceable via Lugano in 16/27 member states

BUT: Defense on validity not possibley p(Art. 16 (4) LuganoC + GAT/LUK decision – now Art. 22 (4);

CH Court has to ask defendant to go to OHIM or dismissdefense

Simultaneous and successive Actions

CTM d ti l t d k diff t t ia. CTM and national trade mark, different countriesno geographical overlap

b CTM and national trade mark different countriesb. CTM and national trade mark, different countriesgeographical overlap

Th k f tt tiThank you for your attention

Di i !Discussion !

Example 1AA, having a seat in France and being owner of a registered CTMthreatens to sue B, having a seat in Germany, b f i f i t f h CTM i G d Fbecause of an infringement of such CTM in Germany and France.

A could sue B in Germany – Community wide injunction (Art. 97 (1)A could sue B in Germany Community wide injunction (Art. 97 (1) + 98 CTMR) or in Germany + France (forum delicti) and sends a warning letter because of infringement in Germany

But: B sues A for obtaining a negative declaration – only in Francepossible (Art. 97 (5) CTMR) for no infringement in Germany p ( ( ) ) g y(Art. 5 (3) BrusselR (warning letter=harmful event) not applicable because Art. 94 (2) a CTMR)

A cannot sue B in Germany for infringement in Germany (Art.27)BUT CAN A sue B in Germany for infringement in France?

Example 5AExample 5A

A having a seat in France and being owner of a registered CTMA, having a seat in France and being owner of a registered CTMthreatens to sue B, having a seat in Germany, because of an infringement of such CTM in Germany and Italy.

A sues B in Germany – Community wide injunction (Art. 97 (1) + 98 CTMR) and in Italy (forum delicti) the exclusive licensee A*98 CTMR) and in Italy (forum delicti) the exclusive licensee A*is the plaintiff ??

Art. 28 BrusselR ?