Nejvyšší soud ČR; 2021-01-27; 30 Cdo 638/2019
Decision by national courts in the field of European Union law — ECLI:CZ:NS:2021:30.CDO.638.2019.1
Date: 2021-01-27
Subject matter: Judicial cooperation in civil matters
Origin: Czechia

82021CZ0127(51)_ENG_SUMJURE
JURE summary
JURE summary
This case regards a question of international jurisdiction in a trade mark dispute resolved by the Nejvyšší soud (hereinafter ‘the Supreme Court’).
Two foreign companies (hereinafter ‘the plaintiffs’) applied before the Městský soud v Praze (hereinafter ‘Court of First Instance’) and sought the protection of exclusive rights conferred on them by EU trade marks. As proprietors of the trade mark ‘SKY‘, the plaintiffs alleged that two companies domiciled in Luxembourg (hereinafter ‘the defendants’) infringed their rights by providing a product under the business name ‘SKYLINK’.
The defendants submitted a translation of the decision issued by the court of Luxembourg, according to which the same plaintiffs sued the same defendants before that court over the same or similar trade marks. The Luxembourg court based its jurisdiction on Article 124 of the Regulation (EU) 2017/1001 (1) and refused to stay its proceedings under Article 30 of the Brussels I Regulation (recast) (2).
The Court of First Instance acknowledged the existence of proceedings involving the same cause of action and between the same parties held before the courts of different Member State. It declared a lack of jurisdiction favouring the Luxembourg court and stayed the proceedings under Article 29(1) of the Brussels I Regulation (recast).
The Vrchní soud v Praze (hereinafter ‘the Court of Appeal’) upheld the first instance decision.
The plaintiffs filed a cassation appeal to the Supreme Court, alleging an erroneous application of the Brussels I Regulation (recast).
The Supreme Court cited Article 37(1)(b) of the Brussels I Regulation (recast), according to which ‘a party who wishes to invoke in a Member State a judgment given in another Member State shall produce the certificate issued pursuant to Article 53’. However, the defendants provided only the translation of the foreign decision. The Supreme Court confirmed the plaintiffs’ position that a foreign judgment cannot be recognised without fulfilling all requirements laid down by the Brussels I Regulation (recast). Furthermore, the proceedings before the Luxembourg court were not yet finished and were pending an appeal, so it was not even clear if the judgment would have any effects which could be later recognised in Czechia.
The Supreme Court confirmed that the proceedings in Czechia and Luxembourg were commenced between the same parties. However, the Supreme Court explained that the proceedings do not fully involve the same cause of action. The rights exercised before the Luxembourg court and before the Czech courts do not regard the same trade mark registration numbers. Regulation (EU) 2017/1001, as confirmed by the case-law of the Court of Justice of the European Union, is clear that the rights conferred by an EU trade mark relate exclusively to that particular trade mark. Each trade mark with a unique registration number must be deemed a separate cause of action if the rights conferred by the specific trade mark are exercised before the court.
The Supreme Court held that both lower courts erred in evaluation of the effect of the Luxembourg court and application of the Brussels I Regulation (recast), annulled both decisions and referred the case back to the Court of First Instance for a new hearing.
(1) Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark.
(2) Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.