7 September 2017TrademarksAurélia Marie

France jurisdiction report: The application of lis pendens

The purpose of the lis pendens rule laid out in article 109 of EU Regulation No. 207/2009 is to avoid contradictory judgments when claims of infringement are decided concurrently by courts of different member states.

It applies when two courts have to deal with a national trademark and an EUTM when the parties are the same and the same facts are involved.

In such situations, and where the marks in question are identical and valid for identical goods and services, the second court must decline jurisdiction in favour of the first. When the jurisdiction of the first court is contested, or if the mark and/or the goods or services are only similar, the second court may stay the proceedings.

In Case C-231/16, the Court of Justice of the European Union (CJEU) will have to rule on the application of article 109 in response to a referral from the (Landgericht Hamburg) Regional Court in Germany for a preliminary ruling in relation to the use of ‘Merck’.

It should be noted that following the split between the German pharmaceutical group and its US subsidiary, two separate companies exist under the name ‘Merck’, the use of which has been regulated by a coexistence agreement since 1970.

The German company, Merck KGaA, owner of the EUTM ‘Merck’, brought an action before the German court against the two US companies Merck & Co Inc and Merck Sharp & Dohme Corp, and their German subsidiary MSD Merck Sharp & Dohme GmbH, in order to obtain prohibition of the use of ‘Merck’.

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