Merck KGaA v Merck & Co. Inc. and Others.
Date: 2017-10-19
26


It must be recalled that, according to the Court’s settled case-law, it follows from the need for a uniform application of EU law and from the principle of equality that the wording of a provision of EU law which, as in the present case, makes no express reference to the law of the Member States for the purpose of determining its meaning and scope must normally be given an autonomous and uniform interpretation throughout the European Union, having regard not only to its wording but also to the context of the provision and the objective pursued by the rules of which it forms part (see, inter alia, judgments of 26 May 2016, Envirotec Denmark, C‑550/14, EU:C:2016:354, paragraph 27, and of 18 May 2017, Hummel Holding, C‑617/15, EU:C:2017:390, paragraph 22 and the case-law cited).
27


At the outset, it should be pointed out that the scope of Article 109(1)(a) of Regulation No 207/2009 cannot be determined on the basis of an exclusively textual interpretation due to the differences between the various language versions of that provision (see, to that effect, judgment of 15 March 2017, Al Chodor, C‑528/15, EU:C:2017:213, paragraph 32 and the case-law cited).
30


Second, it should be pointed out that the procedural rules laid down by Regulation No 207/2009 are lex specialis in relation to the procedural rules contained in Regulation No 44/2001. Thus, pursuant to Article 94(1) of Regulation No 207/2009, the provisions of Regulation No 44/2001 are, in so far as Regulation No 207/2009 does not provide otherwise, applicable to proceedings relating to EU trade marks and to proceedings relating to simultaneous and successive actions on the basis of EU trade marks and national trade marks, which suggests a coherent interpretation of the concepts contained in those instruments.
31


As regards the objective of Article 109(1) of Regulation No 207/2009, it should be noted that, according to recital 17 of the regulation, it is intended to avoid contradictory judgments in actions which involve the same acts and the same parties and which are brought on the basis of an EU trade mark and parallel national trade marks.
32


That objective corresponds to one of the objectives of Regulation No 44/2001, which is, in particular, according to recital 15 of that regulation, to minimise the possibility of concurrent proceedings and to ensure that irreconcilable judgments will not be given in different Member States.
36


According to the case-law on Article 21 of the Convention of 27 September 1968 on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters, the Court’s interpretation of which is equally valid for Article 27 of Regulation No 44/2001, the ‘cause of action’ comprises the facts and the rule of law relied on as the basis of the action (see, by analogy, judgments of 6 December 1994, Tatry, C‑406/92, EU:C:1994:400, paragraph 39, and of 22 October 2015, Aannemingsbedrijf Aertssen and Aertssen Terrassements, C‑523/14, EU:C:2015:722, paragraph 43).
39


As regards the ‘subject matter’, the Court has stated that this means the end the action has in view (see, by analogy, judgments of 6 December 1994, Tatry, C‑406/92, EU:C:1994:400, paragraph 41, and of 8 May 2003, Gantner Electronic, C‑111/01, EU:C:2003:257, paragraph 25); the concept of ‘subject matter’ cannot be restricted so as to mean two claims which are formally identical (see, by analogy, judgment of 8 December 1987, Gubisch Maschinenfabrik, 144/86, EU:C:1987:528, paragraph 17).
40


Account must be taken in that regard of the applicants’ respective claims in each of the sets of proceedings (see, by analogy, judgment of 14 October 2004, Mærsk Olie & Gas, C‑39/02, EU:C:2004:615, paragraph 36).
42


In view of the objective of Article 190(1)(a) of Regulation No 207/2009, set out in paragraph 31 above, the actions initiated before the courts listed in the previous paragraph must, for the application of the provision, be found to have the same subject matter only in so far as the alleged infringements relate to the same territory.
47


However, it is clear from the objective of Article 109 of Regulation No 207/2009, set out in paragraph 31 above and in the answer to the first and second questions, that the declinature of jurisdiction laid down in Article 109(1)(a) of the regulation may apply only to the extent that the actions brought before those courts involve the same cause of action (see, to that effect, judgment of 6 December 1994, Tatry, C‑406/92, EU:C:1994:400, paragraphs 33 and 34).
50


Thus, in order to guarantee the uniform protection throughout the entire area of the European Union of the right conferred by the EU trade mark against the risk of infringement, the prohibition by a competent EU trade mark court on proceeding with acts which infringe or would infringe an EU trade mark must therefore, as a rule, extend to the entire area of the European Union (judgments of 12 April 2011, DHL Express France, C‑235/09, EU:C:2011:238, paragraph 44, and of 22 September 2016, combit Software, C‑223/15, EU:C:2016:719, paragraph 30).
51


However, the territorial scope of the prohibition may in certain circumstances be restricted (judgments of 12 April 2011, DHL Express France, C‑235/09, EU:C:2011:238, paragraph 46, and of 22 September 2016, combit Software, C‑223/15, EU:C:2016:719, paragraph 31).