In the case of Hanssen Beleggingen BV v. Tanja Prast-Knipping
(C-341/16, Oct. 5, 2017), the Court of Justice of the European Union (CJEU) held that the exclusive jurisdiction of the member states in proceedings concerning intellectual property rights (IPRs) is limited to proceedings concerning the registration or validity of those rights, and that proceedings concerning exclusively the question of who is entitled to those rights do not fall within the scope of that exclusive jurisdiction.
After the death of Mr. Helmut Knipping, owner of a German company which is the holder of Benelux trademark registration no. 361604 for KNIPPING (& device), Ms. Prast-Knipping was recorded as the proprietor of the trademark by the Benelux Intellectual Property Office based on her being the sole heiress of Mr. Knipping.
Ms. Prast-Knipping’s recordal as the proprietor of that Benelux trademark was contested before the German court. The Higher Regional Court of Düsseldorf (referring court) referred the case to the CJEU, in order to clear its doubts as to whether the German courts had jurisdiction to hear the case. The question was whether it was possible for the courts of a member state, in which registration of the mark concerned had taken place, to have exclusive jurisdiction under Article 22(4) of Regulation No. 44/2001. The referring court sought answers to whether the action amounted to proceedings “concerning with the registration or validity of … trade marks” within the meaning of Article 22(4), and whether the judgment of Duijnstee
(Case 288/82, Nov. 15, 1983) still had to be taken into account despite the development of trademark law since that judgment.
The court held in the judgment of Duijnstee
that proceedings concerning exclusively the question of who is entitled to a patent do not fall within the scope of exclusive jurisdiction. Article 22(4) of Regulation No. 44/2001 provides exclusive jurisdiction to the court of a member state in which the right was registered “in proceedings concerned with the registration or validity of [IPRs].” The CJEU held in the case of Solvay
(C-616/10, July 12, 2012) that Article 22(4) reflects the same system and is drafted in almost identical terms as Article 16(4) of the Brussels Convention, so that it is necessary to ensure continuity in the interpretation of those provisions. Accordingly, the CJEU confirmed that the reasoning in the case of Duijnstee
remains valid despite the development of trademark law, and also applies to trademark cases, not just patents.
In conclusion, the CJEU held that cases that concern exclusively the question of who must be regarded as the proprietor of a trademark do not fall within the exclusive jurisdiction of a member state in which that trademark was registered, and do not fall within the scope of Article 22(4) of Regulation No. 44/2001.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.
© 2018 International Trademark Association