The matter at hand

Brite Strike Technologies SA, established in Luxembourg, is the owner of the Benelux trade mark BRITE STRIKE. Brite Strike Technologies Inc. brought an action before the referring court in The Hague seeking a declaration of invalidity in respect of that mark on grounds of bad faith. Brite Strike Technologies Inc. based the jurisdiction of the court on Article 22(4) 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 Hague being the place where the Benelux trade mark register is kept.

Brite Strike Technologies SA raised an objection of lack of jurisdiction, arguing that the jurisdiction rules laid down in the Benelux Convention on Intellectual Property (“BCIP”) should be applied, according to which the action should have been brought in Luxembourg.

Bearing in mind that Article 71 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 provides that it does not affect any conventions to which Member States are parties and which, in relation to particular matters, govern jurisdiction, the referring court asked the ECJ whether Article 71 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 allows the member states of the BCIP to apply jurisdiction laid down therein.

The judgment of the ECJ

With reference to its judgment in TNT Express Nederland (C‑533/08), the ECJ considers that Article 71 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 applies to conventions concluded between Member States before the entry into force 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 only. This limitation of the scope of Article 71 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 “reflects the settled case-law stating that, as and when common rules come into being, the Member States no longer have the right to conclude international agreements affecting those rules” (paragraph 53).

Although the BCIP was concluded after the entry into force 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, this does not decide the matter yet, as the ECJ states that it must also be determined “whether the BCIP and that limitation are incompatible, which would have as a consequence that Article 71 [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] does not authorise the application of Article 4.6 of the BCIP instead of Article 22(4) [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 55).

In that examination, according to the ECJ, account must be taken of the fact that the BCIP is an agreement concluded in the framework of a regional union, the Benelux, and that Article 71 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 therefore be interpreted in the light of Article 350 TFEUTreaty on the Functioning of the European Union, which provides that EU law does not preclude the existence or completion of that regional union, in so far as the objectives it pursues are not attained by the application of EU law (paragraph 56).

The ECJ explains that this enables the Benelux to leave in force, by way of derogation from the EU rules, the rules which apply within their regional union, if that regional union is further advanced than the internal market and if that derogation is indispensable for the proper functioning of the Benelux regime (paragraph 57).

The ECJ considers that the first requirement is met as the “Benelux trade marks and designs are subject to completely uniform rules and common institutional and procedural rules”  (paragraph 59).

With regard to the second requirement, the ECJ holds that: “having regard to the fact that Benelux trade marks and designs fall within a regime in the three Member States concerned which is in advance of the jurisdictional structure established by Benelux […] the codified rule in Article 4.6 of the BCIP […] may […] be treated as indispensable for the proper functioning of the Benelux regime of trade marks and designs” (paragraph 63).

Consequently, as both requirements are met, the ECJ concludes that Article 71 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, read in the light of Article 350 TFEUTreaty on the Functioning of the European Union, does not preclude the application to those disputes of the rule of jurisdiction for disputes relating to Benelux trade marks and designs, laid down in Article 4.6 of the BCIP (paragraphs 66 and 71).