Where actions for infringement are brought before the courts of different Member States, second court is required to decline jurisdiction only for dispute relating to territory referred to before first court

C-231/16

Merck v MSD

Private international law: Jurisdiction

Trade marks

19 Oct 2017

The matter at hand

Merck, the applicant in the main proceedings, is a chemical and pharmaceutical undertaking. The defendants are all part of the Merck Sharp & Dohme ('MSD') concern and primarily sell medicines and vaccines, as well as cosmetic and healthcare products. Merck and MSD were initially part of the same group of companies, but have been completely separate since 1919. Merck is the proprietor of the national trade mark MERCK, registered in the United Kingdom, and of the EU word mark MERCK.

On 8 March 2013, Merck brought an action before the High Court of Justice of England and Wales (United Kingdom) against MSD for an alleged infringement of its national trade mark due to the use of the name 'Merck' in the United Kingdom, specifically on the internet in domain names and on social media platforms. On 11 March 2013, Merck also brought an action before the Landgericht Hamburg (Regional Court, Hamburg, Germany) against MSD on the basis of its EU trade mark. It later withdrew this action in so far as it related to the territory of the United Kingdom.

MSD took the view that the action pending before the Landgericht Hamburg was inadmissible, as Article 109(1)(a) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark provides: ‘Where actions for infringement involving the same cause of action and between the same parties are brought in the courts of different Member States, one seised on the basis of an EU trade mark and the other seised on the basis of a national trade mark, the court other than the court first seised shall of its own motion decline jurisdiction in favour of that court where the trade marks concerned are identical and valid for identical goods and services.’ The Landgericht Hamburg had doubts with regard to the application of this jurisdiction rule and referred several questions to the ECJ for a preliminary ruling.

The judgment of the ECJ

The ECJ starts by examining whether in this case the condition of the 'same cause of action' within the meaning of Article 109(1)(a) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark has been satisfied. The ECJ holds that this condition must be given the same interpretation as the same condition in Article 27 of Brussels ICouncil Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, considering that Article 109(1)(a) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark is modelled on the rules on lis pendens contained in Brussels ICouncil Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (paragraph 29) and has the same objective, namely “to minimise the possibility of concurrent proceedings and to ensure that irreconcilable judgments will not be given in different Member States” (paragraph 32). The ECJ therefore refers to its case-law under Article 27 of Brussels ICouncil Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, from which it follows that “the ‘cause of action’ comprises the facts and the rule of law relied on as the basis of the action” (paragraph 36). The ECJ explains that this means that the successive legal actions must have the same legal basis, relate to the same facts and have the same subject matter (paragraphs 37 – 39).

In the first place, as regards the legal basis, the ECJ finds that both the action on the basis of an EU trade mark and the action on the basis of a national trade mark have the same legal basis, given that they are based on exclusive rights arising from identical trade marks. In the second place, as regards the facts, the ECJ considers that it is apparent that this condition has been satisfied as well, since the actions in the United Kingdom and in Germany all concern the use of the term 'Merck' in domain names and social media. As to, third, the subject matter, however, the ECJ rules that the actions initiated before different courts “must be found to have the same subject matter only in so far as the alleged infringements relate to the same territory” (paragraph 42). For this reason, the second court seised on the basis of an EU trade mark concerning an alleged infringement in the entire territory of the EU, is required to decline jurisdiction only in respect of the part of the dispute relating to the territory of the Member State referred to in the action for infringement brought before the court first seised (paragraphs 45 – 53 and 56). Therefore, “the condition (…) as to the existence of the ‘same cause of action’ is no longer satisfied where, following a partial withdrawal by an applicant, provided that it was properly declared, of an action for infringement on the basis of an EU trade mark seeking initially to prohibit the use of that trade mark in the territory of the European Union, such a withdrawal concerning the Member State referred to in the action brought before the court first seised, on the basis of a national trade mark seeking to prohibit the use of that trade mark within the territory of that Member State, the actions in question no longer relate to an alleged infringement of a national trade mark and an identical EU trade mark in the territory of the same Member States” (paragraph 58).

Finally, the ECJ clarifies that the condition of ‘the same cause of action’ is satisfied only in so far as the respective trade marks are valid for identical goods or services (paragraph 62).

Commentary

This judgment is another example of an exception to the rule that an injunction based on an EU trade mark must, as a rule, extend to the entire area of the EU. In this regard, the ECJ follows the opinion of the Advocate General, who observed: “I note in this regard that the Court has already laid down the principles under which the EU trade mark court may, exceptionally, restrict the territorial effect of a judgment in an action for infringement, in two situations. The first is where the applicant has limited the territorial scope of its action, in the exercise of its power freely to determine the scope of the action [see DHL Express France, C‑235/09] and the second is where the EU trade mark tribunal concludes, on the basis of the material which the defendant should, in principle, put before it, that the use of the relevant sign does not create a likelihood of confusion with the EU trade mark in one precisely defined part of the European Union [see Combit, C‑223/15]. It seems to me to be appropriate to add a third situation in which the territorial scope of a judgment delivered in an action for infringement of an EU trade mark should be limited. This relates to cases where the EU trade mark court, being the second court seised, must decline jurisdiction in part in order to delimit the scope of simultaneous actions based on national and EU trade marks.”