Bundesgerichtshof; 2016-01-28; I ZR 236/14
Decision by national courts in the field of European Union law — ECLI:DE:BGH:2016:280116BIZR236.14.0
Date: 2016-01-28
Subject matter: Judicial cooperation in civil matters
Origin: Germany

82016DE0128(51)_ENG_SUMJURE
JURE summary
JURE summary
The case dealt with by the Bundesgerichtshof (hereinafter ‘the Supreme Court’) concerned a conflict of pendency where contractual and statutory claims had been brought in courts of different Member States.
The parties are producers and sellers of jeans. The plaintiff is an owner of German figurative marks (trademarks 1 – 4 subject to the action). The defendant sells jeans under the brands ‘AMISU’, ‘ANN CHRISTINE’ and ‘FISHBONE’ in its clothing stores. The plaintiff acquired, in 2009 and 2010, a total of five pairs of jeans from the defendant and was of the opinion that the design of their back pockets violated its trademarks subject to the action. In 2010, the plaintiff filed an action against the defendant regarding the jeans under the brands ‘AMISU’, ‘ANN CHRISTINE’ and ‘FISHBONE’ seeking a cease and desist order, the provision of information, the refund of pre-trial warning costs and a determination of the duty of the defendant to provide compensation.
Based on the claims of the plaintiff that the defendant violated its trademarks, the parties had concluded a Settlement Agreement previously, on 21 July 2006 which was made in English language and provided for the application of Belgian laws and the jurisdiction of Belgian courts. The plaintiff filed an action against the defendant in regard to the above jeans brands and on 21 September 2010 with the Commercial court in Brussels, sought a cease and desist order, the provision of information and the payment of compensation. In its ruling of 21 October 2011, the Commercial court in Brussels ordered the defendant to cease and desist from selling the above jeans models and to pay the plaintiff compensation in the preliminary amount of EUR 1,250,000.
The Landgericht Hamburg (hereinafter ‘the Court of First Instance’) convicted the defendant in regard to trademark 1 according to the petition. The appeal of the defendant was unsuccessful. The Court of Appeal considered the revision inadmissible, stating that the process between the parties conducted by the Commercial court in Brussels where the plaintiff sought a cease and desist order and compensation for damage on the grounds of the sale of the above jeans models did not represent a conflict of pendency under Article 27 of the Brussels I Regulation (1).
Article 27(1) of the Brussels I Regulation stipulates that where proceedings involving the same cause of action and between the same parties are brought in the courts of different Member States, any court other than the court first seised shall of its own motion stay its proceedings until such time as the jurisdiction of the court first seised is established.
In order to determine whether two processes are pursuing the same claim, the decisive factor is not the ‘formal identity’ but the ‘core’ of the disputes in question. Under Article 27(1) of the Brussels I Regulation, the process initiated by the plaintiff with the Commercial court in Brussels did not concern the same claims as pursued in the dispute in question.
The Supreme Court dismissed the objection against the decision of the Court of Appeal regarding the inadmissibility of the revision.
(1) Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.