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10 October 2017Trademarks

Trademark ownership not under Brussels Regulation article 22(4): CJEU

Europe’s highest court has said that article 22(4) of the Brussels Regulation, a provision dealing with the exclusive jurisdiction of courts, does not apply to disputes over trademark ownership.

In the case of Hanssen Beleggingen v Tanja Prast-Knipping, decided on October 5, the Court of Justice of the European Union (CJEU) was ruling on a dispute involving a Dutch company and a German resident.

Article 22(4) of Council Regulation (EC) No 44/2001—the Brussels Regulation—covers the exclusive jurisdiction of courts in IP cases, regardless of domicile.

This means that member states where an IP right has been registered should have exclusive jurisdiction.

A German court had referred the case to clarify whether article 22(4) can be applied to proceedings determining whether a person was correctly registered as the trademark owner.

In 1979 a Germany-based building company, owned by Helmut Knipping, applied for the word and figurative mark ‘Knipping’ at the Benelux Intellectual Property Office (BIPO), which granted the mark in black and white form.

Dutch company Hanssen, which operates in a similar trade, owns the same Benelux mark but in blue and yellow.

In 2003, eight years after Knipping had passed away, the defendant in the case, Prast-Knipping, asked BIPO to grant ownership of the mark registered to Knipping to her, as his heir. BIPO granted her request.

However, Hanssen contested this decision, claiming the mark was no longer part of Knipping’s estate when he died. It filed a lawsuit before the Regional Court of Düsseldorf, where Prast-Knipping is domiciled, demanding that she waive her registration at BIPO.

The court rejected the case in 2015, because the mark had been included in the estate when Knipping died and was therefore legitimately transferred.

Hanssen appealed against the decision at the Higher Regional Court of Düsseldorf, which referred the case to the CJEU because it was unsure whether a German court would have jurisdiction over the dispute.

The German court asked: “Does the notion of proceedings which are ‘concerned with the registration or validity of … trademarks’, within the meaning of article 22(4) of Regulation [No 44/2001], also cover a claim, brought against the formal proprietor of a Benelux trademark registered in the Benelux trademark register, which seeks an order requiring that defendant to make a declaration to the BIPO that she has no entitlement to the contested mark and that she waives registration as the proprietor of that mark?”

The CJEU replied that article 22(4) does not apply to such proceedings, as is also the case in patent law.

“The court has 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 deposit 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.”

It added that proceedings concerning exclusively “the question of who is entitled to a patent” therefore do not fall within the scope of such exclusive jurisdiction.

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