Oberster Gerichtshof; 2018-12-20; 4 Ob 195/18g
Decision by national courts in the field of European Union law — ECLI:AT:OGH0002:2018:0040OB00195.18G.1220.000
Date: 2018-12-20
Subject matter: Judicial cooperation in civil matters
Origin: Austria

82018AT1220(51)_ENG_SUMJURE
JURE summary
JURE summary
A public limited company based in Switzerland (hereinafter ‘the plaintiff’) sought that an Austrian limited liability company (hereinafter ‘the first defendant’), a second, a third, and a fourth defendant refrain from marketing goods and services by means of a European Union trade mark, as it can be confused with the European Union word mark ‘SKY’. In proceedings independent of this dispute, the second defendant had registered a European Union trade mark ‘Skyworth’, against which the plaintiff’s parent company entered opposition.
The jurisdiction for the cases against the second, third and fourth defendants were based on Article 125(1) of Regulation (EU) 2017/1001 (1) in conjunction with Article 8(1) of the Brussels I Regulation – recast (2). Although the second and the third defendant are not based in the EU and although there is no direct corporate participation in the first defendant, the first defendant should be regarded as a branch of the second, the third and the fourth defendant. The requirements of Article 122(2) of Regulation (EU) 2017/1001 were met. The first defendant presents itself as the European contact and sales representative of the group, which includes the other three defendants.
The Handesgericht Wien (hereinafter ‘the Court of First Instance’) declared itself not competent with regard to the cases against the second and the third defendant and rejected these cases. The first defendant was not a branch as according to the submission. According to the case law of the Court of Justice of the European Union (CJEU), corporate or organisational relations are necessary to establish a branch relationship. The Court of First Instance was also not competent with regards to the first defendant. The plaintiff was not based in the EU and therefore courts of the Member State in which the European Union Intellectual Property Office is based are competent (3).
The Oberlandesgericht Wien (hereinafter 'the Court of Appeal') upheld the decision of the Court of First Instance. The plaintiff did not provide any evidence to confirm that the first, the second and the third defendants were in any group relationship.
The plaintiff’s appeal on points of law in the Oberster Gerichtshof der Republik Österreich (hereinafter 'the Supreme Court') is admissible but not justified.
The plaintiff relies on a special place of jurisdiction but did not explicitly and specifically state the facts which give rise to it in the action.
In order for an entity to be regarded as a branch, the behaviour of both companies matters, in particular that the parent company creates legitimate expectations that must be met. If the parent company is not entitled to give instructions to the entrepreneur, it represents several entrepreneurs who compete with each other, and if it is not involved in the actual settlement of concluded contracts, then there is no branch relation.
The plaintiff is not able to prove that the branch is under the supervision or guidance of the parent company.
The Supreme Court did not comply with the plaintiff’s ordinary appeal on points of law.
(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.
(3) Article 125(3) of Regulation (EU) 2017/1001.