Translate into your preferred language

Monday, January 26, 2015

Update: what instrument governs jurisdiction in Benelux Trademarks and Designs?

The Benelux is not a Member State of the European Union, but it's
 fully part of the  territory of the EU, so what courts would be
designated  if the Brussels I regulation is used?
In my October post, I discussed the unforeseen consequences of consolidating the Benelux conventions regarding the Benelux Trademark and the Benelux Designs into the 2005 Benelux Convention for Industrial Property: because the 2005 convention appeared after entry into force of the Brussels I regulation (44/2001, since this month succeeded by a recast: 1215/2012), the treaty -and its jurisdiction rules which were copy-pasted from the older treaties- may need to be considered a "posterior" treaty to the Brussels I regulation, thus rendering Brussels I applicable. This has important complications, as Brussels I seems not very well suited to jurisdiction in national courts regarding IP rights applicable to part of the EU territory (Netherlands, Belgium, Luxembourg).

After the observation of the Court of Appeal of The Hague (who didn't think it necessary to ask prejudicial questions) end 2013 that Brussels I would apply, the reasoning was followed in several Dutch cases. Where the assumption of jurisdiction would lead to differences when applying the Brussels I or when applying the Benelux convention, the court (always the The Hague court) suggested to ask prejudicial questions to CJEU.

It's three months later now: so time for a short update
* Still no questions are asked! In the The Hague district court case Sojuzplodoimport v Spirits International the plaintiff accepted jurisdiction of the Rotterdam court (thus stopping the The Hague procedure), and therefore the need for the questions disappeared.
* The Hague Court still maintains that Brussels I probably prevails, lastly today in Converse/All Star v Carmika.
* After Belgian courts have not discussed the tension between Brussels I and the Benelux convention most of last year, the jurisdiction issues have now also appeared in the Court Appeal of Brussels (and upon questions of the judge also at the end of the procedure of the court of first Instance): In Louboutin v Dr. Adams Footwear (the infamous litigation regarding rights regarding the red sole, via the judge notices the Dutch position, but argues that it is not relevant in the present procedure, as both instruments give rise to the same outcome (jurisdiction within the scope of Brussels I could be assumed based on appearance of Dr. Adams in the dispute).
*I am not aware of the situation being an issue in Luxembourg (it was not addressed in the case against the rejection of the trademark Benediktiner Weissbier)...

So in short: the notion that Brussels I may be prevailing is gaining support; and at least in the Netherlands this may be turning into that Brussels I probably applies. It seems to me only a matter of time before questions to CJEU (and possibly Benelux Court of Justice) are asked in a case where different conclusions are reached based on the Benelux Convention and based on Brussels I.

1 comment:

  1. Interesting! I hope the Belgian judges will not follow their Dutch counterparts. As the jurisdiction provisions are equal to the old treaties, this should be regarded a newer treaty.