Did Benelux trademark and design legislation become younger than the Brussels Regulation (and does that matter?)?

In 2005, the Benelux countries (Netherlands, Belgium, Luxembourg) did some long overdue house keeping. They merged their separate Trademark and Designs treaties into a single "Benelux Treaty for Industrial Property", BCIP (beware, while this suggests "all IP" is in, only the Trademark and design IP has been unified in the Benelux, and patents, copyright etc are not included) which thus became the legal basis for the Benelux Trademark and the Benelux Industrial Designs.

As is the case with new treaties on the same subject, much of the subject matter was copy-pasted from the previous treaties, which probably both saves negotiation time, and also allows the new treaty to benefit from the case law already available for the provisions. The merger may have an important (and certainly unintended) consequence: because the convention has been concluded after entry into force of the Brussels I regulation  (which governs which EU court has jurisdiction in international cases, Regulatation 44/2001: Council Regulation on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters) it may need to be classified as a "posterior" (later) treaty. Unlike similar instruments (Article 57 of the Brussels convention that preceded the Brussels Regulation) there is a difference  anterior (earlier) and posterior treaties. In cases of conflict between the Brussels I regulation and a posterior treaty, the Brussels I provisions prevail and in Article 71 only anterior conventions can be applied when governing specific subjects.

So the basic question is: should the same provisions (jurisdiction in Benelux IP), with respect to the same IP forms (Benelux Trademarks/Benelux Designs) in a different treaty be prevailing over the Brussels I regulation (as is the case with amended conventions), or should Brussels I be prevailing over them (as is the case with posterior treaties)?

The Court of Appeal of The Hague (Gerechtshof Den Haag) was sufficiently convinced that Brussels I prevailed, and decided that it was thus not necessary to request a preliminary ruling. In its December 2013 decision in H&M v. G-Star (ECLI:NL:GHDHA:2013:4466) regarding infringement of a Benelux trademark of jeans it based its jurisdiction on Article 5(3) of Brussels I as there was a (treat of) infringement in the Netherlands. In line with the Pinckney decision (ECLI:EU:C:2013:635), in infringement proceedings of IP rights, the value of the claim was to be determined there based on the infringement in the member state of the court concerned (and not in the rest of the EU). Without further argumentation, the court stated that as the Benelux Trademark is a unitary right in 3 countries, the "member state concerned" was to be understood as the three Benelux countries.

In April 2014, the the Court of First Instance of The Hague (Rechtbank Den Haag) ECLI:NL:RBDHA:2014:5078, based its jurisdiction-argument on the reasoning of the verdict of the Gerechtshof (prevalence of Brussels I) in PT Mitra Prodin (commercially acting as "JWARE" (Indonesia) v Vandenberg Special Products BV, in combination with (to the extent that Brussels I would be fully determine jurisdiction within the Benelux) BCIP. The case concerned the use of the word mark "Cones"; a Benelux and Community Trademark of Vandenberg, considered not valid according by JWare. JWare  used the term cones for its pre rolled cigarette paper. The judge didn't seem fully convinced as he indicated that using this reasoning also because it was not contested by JWare, and that it was no problem that the defendant had not reacted, as the decision to apply Brussels I resulted in a for him favourable judgement. The case moved to the location of the defendant (the Court of Rotterdam) as the court didn't consider to be relatively competent; both if relative competence would need to be based on the BCIP and on the Dutch Civil Procedure Law (note that Brussels I does only confer international competence, but not within a country).

The same reasoning (international competence for the Dutch court based on Brussels I, and no explicit decision on whether relative competence should be based on either Dutch Civil Procedure Law or BCIP) was followed by
*the The Hague court in BNP Paribas v Binckbank (ECLI:NL:RBDHA:2014:11184) regarding use of the word "Turbo".
* Brunel v Brunet (ECLI:NL:RBDHA:2014:7854, Article 2)
*"Het ijs van Columbus" case (ECLI:NL:RBDHA:2014:7508) (Article 2)
*Daamen v Vanguard (Python grade mark in safety shoes, ECLI:NL:RBDHA:2014:7104, which included both Article 2 and Article 6(1) jurisdiction)...
*Paperclip (stichting Paperclip v NCRV, ECLI:NL:RBDHA:2014:5261, Article 2). The court here stated it saw no reason to give the parties the possibility to comment whether Brussels I or BCIP would apply, as it would give the same result

Also in the Rummicub case (ECLI:NL:RBDHA:2014:9918) of the The Hague court, Brussels I was taken as a basis for NL-jurisdiction, in combination -to the extend needed to confer jurisdiction on the court- with 4.6 BCIP (the implicit question seemed to be: IF with Brussels I the judges of the (all?) Benelux have jurisdiction, BCIP may be needed to decide wether within that territory the Dutch judge has jurisdiction).

In August 2014, the Court of Rechtbank Den Haag ECLI:NL:RBDHA:2014:10760) in Bacardi v Seva based jurisdiction on Article 2 (jurisdiction of the state where the defendant is domiciled) of the Brussels I regulation (it would seem however that, as Bacardi is domiciled in non-member state Liechtenstein, not the Brussels I regulation, but the Lugano convention 2007 would apply. Article 67 of that treaty does however allow for specific conventions on specific matters to prevail; which in my assessment would have required the judge to basis its judgement on the Benelux Convention on Intellectual Property (BCIP)! Liechtenstein is not a party to Lugano, so that doesn't apply... Why does Brussels I apply? In H&M v Gstart the reasoning was followed that the international character of Benelux Trademarks made the case international and thus Brussels I would apply. However, article 4.6(1) of BCIP also gives jurisdiction to the court of the residence of the defendant, so there is no different effect here).

In Sojuzplodoimport v Spirits (ECLI:NL:RBDHA:2014:9739 (in a continuing saga of who became the rights holder to Vodka related IP rights in the wake of the collapse of the Soviet Union), the Court of First Instance of The Hague did not know how to determine its jurisdiction in relation to two related defendants and had options (while considering that article 22(4) of Brussels I rendered jurisdiction on the courts of the Benelux) determining jurisdiction within the Benelux:
*Brussels I, Article 6(1), for which there was not sufficient relation between the defendants, and jurisdiction should be denied
*BCIP, Article 4.6(5): which would lead to jurisdiction
*Rv109, the Dutch article, based on Article 6(1), but which -in the opinion of the judge- would allow for jurisdiction, as the court saw no reason to render the case law of the Brussels regulation fully applicable on the Dutch article.
The situation is complicated because of the interplay between absolute and relative and absolute competence and the possibility to use national law along Benelux/EU law in determining relative competence. The court therefore considered asking preliminary questions regarding jurisdiction to the  European Court of Justice (regarding Brussels I) and/or the Benelux Court of Justice (regarding BCIP). While we don't know how the case was resolved, but the court has made it clear last week that questions will not be asked in this matter...

The The Hague Court of First Instance may well have a second chance to ask preliminary questions, in Brite Strike ("Two police officers started Brite-Strike Technologies Inc. because they were simply not satisfied with what the "top makers" of tactical lights offered for the needs of police officers") Technologies Inc v Brite Strike Technologies SA (ECLI:NL:RBDHA:2014:13187). The matter concerns the use of a Benelux trademark with Brite Strike Technologies being domiciled in Luxembourg. Article 4.6(1) BCIP did render the Luxembourgian judge competent, while article 22(4) of the Brussels I regulation points to the judges of the Benelux (at least, that is one interpretation). The court therefore suggested the following questions (translation is from me):

I. Dient het BVIE (op de in het arrest van het gerechtshof Den Haag van 26 november 2013, overwegingen 28 - 34 genoemde gronden) te worden aangemerkt als een posterieur verdrag zodat artikel 4.6 BVIE niet kan worden aangemerkt als een bijzondere regeling in de zin van artikel 71 EEX-Vo?
Should BCIP (based on the reasoning in 28-34 in ECLI:NL:GHDHA:2013:4466) be considered a posterior treaty, so that Article 4.6 BCIP can not be regarded as a particular matter in the sense of Article 71 Brussels I?

Indien deze vraag bevestigend wordt beantwoord:
If this question is answered in the affirmative:II. Volgt uit artikel 22 lid 4 EEX-Vo dat zowel de Belgische, als de Nederlandse en de Luxemburgse rechter internationaal bevoegd zijn van het geschil kennis te nemen?
Does it follow from Article 22(4) Brussels I that both the Belgian, Dutch and Luxembourgian judge are internationally competent to hear the dispute?

III. Zo nee, hoe dient dan in een geval als het onderhavige te worden vastgesteld of de Belgische, dan wel de Nederlandse of de Luxemburgse rechter internationaal bevoegd is? Kan voor deze (nadere) vaststelling van de internationale bevoegdheid artikel 4.6 BVIE (wél) worden toegepast?
If not, how should in such a case be determined whether the Belgian, the Dutch or the Luxembourgian judge is internationally competent? Can in such a case Article 4.6 BCIP be applied?

IV. Voor zover met vaststelling van de internationale bevoegdheid niet tevens de relatieve bevoegdheid is vastgesteld, dient dan de relatieve bevoegdheid te worden bepaald aan de hand van het nationale (Belgische, Nederlandse respectievelijk Luxemburgse) recht of dient daarvoor artikel 4.6 BVIE (wél) te worden toegepast?

To the extent that in determining the international competence, the relative competence has not also been determined, should the relative competence be determined using national (Belgian, Dutch, Luxembourgian respectively) law or should article 4.6 BCIP be applied?

The parties have until 19 November to give there opinion regarding these questions and advice the judge whether to ask them to the Benelux Court of Justice (the preliminary reference system is very similar to the ECJ system) or to ECJ.  It seems to me that the first 3 questions (except for the last sentence of question III) should be addressed to ECJ and questions III and IV to BCJ. The court could however also decide to ask all questions to BCJ (its a Benelux trademark matter), which in turn is allowed (and as a highest court required) to ask prejudicial questions to ECJ (as determined back in 1997 in Dior v Evora ECLI:EU:C:1997:517; the court did so in 2002 in Melkunie v Benelux Trademark Office, ECLI:EU:C:2004:87) in order to answer (part of) its own questions.

It is hard to evaluate what the answers of ECJ and/or BCJ will be, but indeed, the questions posed seem indeed to be the relevant questions. If I had to give my best guess of the answers I'd say:
I: This is a clash between following the letter of Brussels I (rendering BCIP posterior) or the intent of the EU and Benelux legislator (rendering BCIP anterior). Most clarity will be given if the answer is in the negative: when Brussels I is to prevail, a regulation should be applied which was never written with the peculiarities of the Benelux territory in mind, which is bound to result in more questions. However, the ECJ is known to favour the literal interpretation of Brussels I for the sake of predictability, so I think the answer will be: YES
II: The second question is regarding Brussels I 22(4) and gives jurisdiction to the courts of the Member State in which the deposit or registration has been applied for (this can be: the Benelux, rendering all courts competent; or where the physical application took place: at the trademark office in The Hague, Netherlands, rendering always NL competent), has taken place (idem) or is under the terms of a Community instrument (not applicable?) or an international convention (BCIP) deemed (the convention explicitly excludes the location of registration as a determinant in jurisdiction, and would point to the Benelux courts in general) to have taken place. I would assume that because of the last part of the sentence, courts from all 3 countries are competent.
III: This may be the trickiest question... IF the Benelux is to be regarded a separate territory for the application of Brussels I, then the internal law of Benelux (BCIP?) should determine jurisdiction. However, if multiple courts have international jurisdiction (in this case NL, BE, LU) under Brussels
I, normally they all have jurisdiction, and the lis pendens doctrine will render the court first seized competent to hear the case. Again, I don't see much reason why ECJ would not take a literal meaning of 22(4), render all courts competent, and the location within Benelux dependent on the court first seized.
IV Here I am lost; this would much depend on how the questions I-II-III are answered...

One thing seems clear however: while the court was quite confident in 2013 regarding the relationship between Brussels I and BCIP, several questions remain with the Dutch judiciary, so let's hope a case will soon find its way to ECJ/BCJ in order to obtain the much wanted clarity. Does anyone know about how this is played out in Belgium and Luxembourg? Are they following a divergent approach or did the matter not come up? IF a divergent approach is followed there, it is also possible that the Dutch desire to ask ECJ questions is not because it doubts the interpretation of EU/BX law, but because it wants Belgium (and Luxembourg) to comply. But that's only wild speculation!