Hanseatisches Oberlandesgericht Hamburg; 2014-09-18; 3 U 96/12
Decision by national courts in the field of European Union law — ECLI:DE:OLGHH:2014:0918.3U96.12.0A
Date: 2014-09-18
Subject matter: Judicial cooperation in civil matters
Origin: Germany

82014DE0918(51)_ENG_SUMJURE
JURE summary
JURE summary
A manufacturer of jeans domiciled in Germany (hereinafter ‘the plaintiff’) filed an action against another clothing manufacturer (hereinafter ‘the defendant’) seeking the issuance of a cease and desist order and the regulation of consequent claims under trademark law.
The plaintiff acquired several jean models in Hamburger stores operated by the defendant. According to the plaintiff, its trademark rights as the owner of the German figurative mark called ‘Arcuate’ consisting of double swing arms had been violated because the defendant used similar pattern on their jeans. Therefore, the likelihood of confusion under Article 9(1)(b) of the Council Regulation (EC) No 207/2009 (1) existed.
The defendant found several parts of the action to be inadmissible due to the fact that the plaintiff had already initiated parallel proceedings with the Commercial Court in Brussels regarding the sales of three out of the five respective jeans models. According to the defendant, the plaintiff wanted to achieve an inadmissible cumulation of penalties and compensation for damage.
The Landgericht Hamburg (hereinafter ‘the Court of First Instance’) upheld the action of the plaintiff to a full extent.
The defendant lodged an appeal against this decision with the Hanseatisches Oberlandesgericht Hamburg (hereinafter ‘the Court of Appeal’) applying for the action to be dismissed.
The Court of Appeal found that the Court of First Instance was correct to deny a parallel pendency under Article 27 of the Brussels I Regulation (2) citing that the claims were not identical.
Even though the merits of both proceedings were partially identical, the applied legal basis was different. In this dispute, the plaintiff sued the defendant on the basis of violation of trademark rights, i.e. on tortious basis. Within the proceedings in Brussels, however, the plaintiff was relying on the breach of the agreement earlier concluded by the parties (3). The necessity to differentiate between contractual and tortious claims was stipulated also in Article 5(1) and (3) of the Brussels I Regulation.
The likelihood of confusion existed.
The Court of Appeal dismissed the appeal of the defendant against the decision of the Court of First Instance.
(1) Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark.
(2) Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters
(3) The ‘Settlement Agreement’ from 2006 – containing the declaration of the defendant to cease and desist from its actions and to pay a penalty in the event of a breach of its obliogations.