Opinion of the Advocate General — ECLI:EU:C:2017:13
Date: 2017-01-12
Language of the case: German
Subject matter: Trade marks;Intellectual, industrial and commercial property;Area of freedom, security and justice;Judicial cooperation in civil matters
Procedure: Reference for a preliminary ruling
Origin: Germany

Summary — Judgment of the Court (Second Chamber), 18 May 2017 1. EU law — Interpretation — Methods — Literal, systematic and teleological interpretation 2. EU trade mark — Disputes concerning the infringement and validity of EU trade marks — International jurisdiction — Jurisdiction of the courts of the Member State in which the defendant has an establishment if not domiciled in any of the Member States — Definition of establishment — Literal, systematic and teleological interpretation (Council Regulation No 207/2009, Recital 16, Arts 94, 95(1), 96 and 97(1); Council Regulation No 44/2001, Arts 4, 5(1) and 5, and 18(2)) 3. EU trade mark — Disputes concerning the infringement and validity of EU trade marks — International jurisdiction — Jurisdiction of the courts of the Member State in which the defendant has an establishment if not domiciled in any of the Member States — Definition of establishment — Second-tier subsidiary of a parent body without a seat in the European Union — Included — Conditions (Council Regulation No 207/2009, Art. 97(1); Council Regulation No 44/2001, Recital 11 and Art. 2(1)) 1. See the text of the decision. (see para. 22) 2. Regulation No 207/2009 on the European Union trade mark provides, subject to the exceptions to which it expressly refers, for the application of Regulation No 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters to proceedings relating to EU trade marks and applications for such trade marks, as is expressly stated in recital 16 and Articles 94 and 97(1) of Regulation No 207/2009. In that regard, although certain provisions of Regulation No 44/2001, such as Articles 5(5) and 18(2), also refer to the concept of ‘establishment’, so that it cannot be ruled out that the guidance from the Court’s case-law on those two provisions may to some extent be relevant for interpreting the concept of ‘establishment’ within the meaning of Regulation No 207/2009, it cannot, however, be considered that that concept must necessarily bear the same meaning, whether it is used in one or the other of the two regulations. Thus, notwithstanding the principle that Regulation No 44/2001 applies to proceedings relating to an EU trade mark, the application of certain provisions of that regulation, in particular the rules in Articles 4 and 5(1), to proceedings in respect of the actions and claims referred to in Article 96 of Regulation No 207/2009 is excluded by Article 94(2) of that regulation. In the light of that exclusion, the jurisdiction of the EU trade mark courts laid down in Article 95(1) of Regulation No 207/2009 to hear the actions and claims referred to in Article 96 of that regulation results from rules directly provided for by that regulation, which have the character of lex specialis in relation to the rules provided for by Regulation No 44/2001. In addition, Regulation No 44/2001, on the one hand, and Regulation No 207/2009, on the other, do not pursue the same objectives. Thus, according to recitals 12 and 13 of Regulation No 44/2001, that regulation aims to lay down, in addition to the defendant’s domicile, alternative grounds of jurisdiction based on a close link between the court and the action, or in order to facilitate the sound administration of justice, or, in relation to insurance, consumer and employment contracts, to protect the weaker party by rules of jurisdiction more favourable to his interests than the general rules. Regulation No 207/2009 for its part aims, according to recitals 15 to 17, to strengthen the protection of EU trade marks, to prevent inconsistent decisions on the part of the courts and to ensure that the unitary character of those trade marks is not undermined, by means of decisions of EU trade mark courts which have effect and cover the entire area of the European Union. Accordingly, in order to determine the defining characteristics of the concept of ‘establishment’ within the meaning of Article 97(1) of Regulation No 207/2009, it is necessary to take account not only of the wording of that provision, but also of its context and objectives. (see paras 24-29) 3. Article 97(1) of Regulation No 207/2009 on the European Union trade mark must be interpreted as meaning that a legally distinct second-tier subsidiary, with its seat in a Member State, of a parent body that has no seat in the European Union is an ‘establishment’, within the meaning of that provision, of that parent body if the subsidiary is a centre of operations which, in the Member State where it is located, has a certain real and stable presence from which commercial activity is pursued, and has the appearance of permanency to the outside world, such as an extension of the parent body. Article 97(1) of Regulation No 207/2009, which provides that the courts of the Member State in which there is an establishment of a company which has no seat within the European Union are to have jurisdiction, far from being an exception to the basic rule of jurisdiction at the domicile of the defendant, which follows from Article 2(1) of Regulation No 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters read in the light of recital 11 of the regulation, is, rather, an implementation of that principle, which suggests that that concept should be interpreted broadly. That jurisdictional rule is a general principle, which expresses the maxim actor sequitur forum rei, because it makes it easier, in principle, for a defendant to defend himself. Such is the case where a party is required to defend itself before the courts of a Member State in which it has an establishment and with which it is therefore more closely linked. Furthermore, that interpretation does not undermine the objectives of the legislation on the EU trade mark as the decisions of the EU trade mark courts with jurisdiction on the basis of Article 97 of Regulation No 207/2009 have effect and cover the entire area of the European Union. It follows from such a broad interpretation that there must be visible signs enabling the existence of an ‘establishment’ within the meaning of Article 97(1) of Regulation No 207/2009 to be easily recognised. The existence of an establishment thus requires a certain real and stable presence, from which commercial activity is pursued, as manifested by the presence of personnel and material equipment. In addition, that establishment must have the appearance of permanency to the outside world, such as the extension of a parent body. In that regard, it is irrelevant whether the establishment on the territory of a Member State of an undertaking whose seat is outside the European Union has legal personality or not. Third parties must thus be able to rely on the appearance created by an establishment acting as an extension of the parent body. The fact that an undertaking with its seat in a Member State before the courts of which an action is brought is a second-tier subsidiary of the undertaking whose seat is located outside of the European Union and not a direct subsidiary of that undertaking is also irrelevant, provided that the conditions set out above are satisfied. Furthermore, it is, in principle, irrelevant for the purposes of Article 97(1) of Regulation No 207/2009 whether the establishment thereby determined has participated in the alleged infringement. Such a requirement, which is not laid down in Article 97(1) of Regulation No 207/2009, would, in addition, not be reconcilable with the need for a broad interpretation of the concept of ‘establishment’, set out above. (see paras 34-41, operative part)