The matter at hand
In a dispute concerning the ownership of a Benelux trade mark which arose after the original owner had died, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany) had doubts as to its jurisdiction to hear the case. In essence, the referring court asked whether it has jurisdiction as the court of the place where the defendant is domiciled, or whether the courts of the Member State in which registration of the trade mark had taken place – namely the Netherlands, since the seat of BOIP is located in The Hague – have exclusive jurisdiction under Article 22(4) 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.
The judgment of the ECJ
The ECJ recalls, referring to Reichert and Kockler (C‑115/88), that provisions which confer exclusive jurisdiction, such as Article 22 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, must not be given a wider interpretation than is required by their objective, “since they deprive the parties of the choice of forum which would otherwise be theirs and may, in certain cases, result in a situation whereby the parties are brought before a court which is not that of any of them” (paragraph 32). The ECJ further recalls that it has already held in cases concerning jurisdiction in the field of patents, that, where the dispute concerns neither the validity of a patent nor the existence of its application or registration, the dispute is not covered by the concept of proceedings ‘concerned with the registration or validity of patents’ and therefore falls outside the exclusive jurisdiction of the courts of the Member State in which the right was registered. The ECJ rules that the same applies to cases relating to a trade mark. In that regard, the ECJ notes “that 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” and is therefore not covered by the objective underlying Article 22(4) 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 (paragraph 37). Consequently, the case at issue does not fall within the scope of the exclusive jurisdiction created by Article 22(4) 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.