1 This request for a preliminary ruling concerns the interpretation of Article 22(4) and Article 71 of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (OJ 2001 L 12, p. 1).
2 The request has been made in proceedings between Brite Strike Technologies Inc., a company established in Plymouth, Massachusetts (United States of America), and Brite Strike Technologies SA, a company established in Luxembourg (Luxembourg), concerning an application by Brite Strike Technologies Inc. for the annulment of a trade mark owned by Brite Strike Technologies SA.
3 Recitals 11 and 12 of Regulation No 44/2001 stated: ‘(11) The rules of jurisdiction must be highly predictable and founded on the principle that jurisdiction is generally based on the defendant’s domicile and jurisdiction must always be available on this ground save in a few well-defined situations in which the subject matter of the litigation or the autonomy of the parties warrants a different linking factor. … (12) In addition to the defendant’s domicile, there should be alternative grounds of jurisdiction based on a close link between the court and the action or in order to facilitate the sound administration of justice.’
4 Under Article 1(1) thereof, that regulation ‘applies in civil and commercial matters, whatever the nature of the court or tribunal. It shall not extend, in particular, to revenue, customs or administrative matters’.
5 Article 22(4), first subparagraph, of Regulation No 44/2001, which comes under Section 6 of Chapter II, entitled ‘Exclusive jurisdiction’, provided: ‘The following courts shall have exclusive jurisdiction, regardless of domicile: … (4) in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of a Community instrument or an international convention deemed to have taken place. …’
6 Article 67 of that regulation, in Chapter VII thereof, entitled ‘Relations with other instruments’, provided: ‘This Regulation shall not prejudice the application of provisions governing jurisdiction and the recognition and enforcement of judgments in specific matters which are contained in Community instruments ...’
7 Article 69 of Regulation No 44/2001 contained a list of conventions concluded between certain Member States before the entry into force of Regulation No 44/2001 and provided that those conventions were to be replaced by that regulation in so far as they concern matters to which the regulation applies.
8 Article 71 of the regulation, which appears in Chapter VII thereof, provided: ‘1. This Regulation shall not affect any conventions to which the Member States are parties and which in relation to particular matters, govern jurisdiction or the recognition or enforcement of judgments. 2. With a view to its uniform interpretation, paragraph 1 shall be applied in the following manner: (a) this Regulation shall not prevent a court of a Member State, which is a party to a convention on a particular matter, from assuming jurisdiction in accordance with that convention, even where the defendant is domiciled in another Member State which is not a party to that convention … …’
9 According to Article 76 thereof Regulation No 44/2001 entered into force on 1 March 2002.
10 Regulation No 44/2001 was repealed by 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 (OJ 2012 L 351, p. 1), which is applicable from 10 January 2015.
11 The rules laid down in Article 22(4) to Article 67 and Article 71 of Regulation No 44/2001 have been reproduced in Article 24(4) to Article 67 and Article 71 of Regulation No 1215/2012.
12 Article 69 of Regulation No 1215/2012 provides: ‘Subject to Articles 70 and 71, this Regulation shall, as between the Member States, supersede the conventions that cover the same matters as those to which this Regulation applies. In particular, the conventions included in the list established by the Commission pursuant to point (c) of Article 76(1) and Article 76(2) shall be superseded.’
13 As the dispute in the main proceedings was brought before the referring court on 21 September 2012, the question of jurisdiction raised by the request for a preliminary ruling will be examined in the light of Regulation No 44/2001.
14 The convention Benelux en matière de propriété intellectuelle (marques et dessins ou modèles) (Benelux Convention on Intellectual Property (Trade Marks and Designs)) of 25 February 2005, signed in The Hague by the Kingdom of Belgium, the Grand Duchy of Luxembourg and the Kingdom of the Netherlands (the ‘BCIP’) entered into force on 1 September 2006.
15 The BCIP replaces the loi uniforme Benelux sur les marques (Uniform Benelux Law on Marks, ‘BLT’) and the loi uniforme Benelux en matière de dessins ou modèles (Uniform Benelux Designs Law, ‘BLD’).
16 The BLT entered into force on 1 January 1971 and was annexed to the convention Benelux en matière de marques de produits (Benelux Convention on Trademarks) of 19 March 1962, which entered into force on 1 July 1969. That convention was repealed by the BCIP.
17 Article 37(A) of the BLT provided: ‘Unless otherwise expressly stipulated by contract, jurisdiction in respect of mark cases shall be determined by the domicile of the defendant or by the place where the undertaking giving rise to the litigation originated or was or is to be performed. The place where a mark was filed or registered can on no account serve in itself as a basis for the determination of jurisdiction. If the criteria laid down hereinabove should be insufficient for the determination of jurisdiction, then the plaintiff may file the action before the court of his domicile or residence, or, if he has no domicile or residence within the Benelux territory, before the Courts of Brussels, The Hague or Luxembourg, at his option.’
18 The BLD entered into force on 1 January 1975 and was annexed to the convention Benelux en matière de dessins ou modèles (Uniform Benelux Designs Law) of 25 October 1966, which entered into force on 1 January 1974. That convention was also repealed by the CBPI.
19 Article 29(1) of the BLD was expressed in terms corresponding to Article 37(A) of the BLT.
20 The Benelux Convention on Trade Marks and the Uniform Benelux Designs Law are not on the list contained in Article 69 of Regulation No 44/2001.
21 According to the preamble, the purpose of the BCIP is to ‘replace the conventions, uniform laws and amending protocols relating to Benelux trademarks and designs with a single convention systematically and transparently governing both trademark law and design law’, and to ‘replace the Benelux Trademark Office and the Benelux Designs Office with the Benelux Organisation for Intellectual Property (trademarks and designs) carrying out its mission through decision making and executive bodies provided with their own and additional powers’.
22 Article 1.2 of the BCIP provides as follows: ‘1. A Benelux Organisation for Intellectual Property (Trademarks and Designs) … shall be established; 2. The executive bodies of the Organisation shall be: (a) the Committee of Ministers …; (b) the Executive Board …; (c) the Benelux Intellectual Property Office (Trademarks and Designs) …’
23 Article 1.5 of the BCIP provides: ‘1. The Organisation shall have its headquarters in The Hague. 2. The Office shall be set up in The Hague. 3. Branches of the Office may be established elsewhere.’
24 Article 2.2 of the BCIP provides as follows: ‘… The exclusive right in a trademark shall be acquired by registration of the trademark through filing in Benelux territory (Benelux filing) or resulting from registration with the International Bureau (international filing).’
25 Under Article 2.4, the opening words and (f), of the BCIP: ‘No right in a trademark shall be acquired by the following: … (f) the registration of a trademark which was filed in bad faith, in particular: 1. filing in the knowledge of or in inexcusable ignorance of normal use in good faith of a similar trademark for similar goods or services by a non-consenting third party on Benelux territory during the last three years; 2. filing with knowledge, resulting from direct relationships, of the normal use in good faith of a similar trademark for similar goods or services by a third party outside Benelux territory during the last three years, unless the third party consents or the said knowledge was acquired only subsequent to the start of the use which the applicant would have made of the trademark on Benelux territory.’
26 Article 2.5 of the BCIP states: ‘1. Trademarks shall be filed within Benelux with national authorities or with the Office in the manner specified by the Implementing Regulations … … 4. Where filing takes place with a national authority, the national authority shall forward the Benelux filing to the Office, either without delay after receiving the filing or after establishing that the filing satisfies the specified conditions. …’
27 Under Article 2.8 of the BCIP: ‘1. Without prejudice to the application of the articles [relating to the grounds for refusals which may be relied on by the Office and the opposition proceedings which may be brought before the Office], the trademark filed shall be registered for the goods or services mentioned by the applicant if the provisions of the Implementing Regulations are satisfied. ... 2. If all the conditions specified in Article 2.5 are satisfied, the applicant may, in accordance with the provisions of the Implementing Regulations, request the Office to proceed with registration of the filing without delay. Articles 2.11, 2.12, 2.14, 2.16 and 2.17 shall apply to trademarks so registered, it being understood that the Office shall have the power to decide to cancel the registration and that the owner of the trademark may submit an appeal for the registration to be upheld.’
28 Article 2.10, paragraph 2, of the BCIP adds that ‘the Office shall register international filings in respect of which application has been made for the extension of protection to Benelux territory’.
29 Article 2.28, paragraph 3, of the BCIP provides : ‘Provided that the owner of the prior registration or the third party referred to in Article 2.4(d), (e) and (f), is a party to the action, any interested party may invoke the nullity of: … (b) filing under which no trademark right is acquired in accordance with Article 2.4 … (f); … nullity under Article 2.4 … (f) must be invoked within a period of five years following the date of registration. ...’
30 Article 4.6 of the BCIP, entitled ‘Territorial jurisdiction’, provides: ‘1. Unless the territorial jurisdiction of the courts is expressly stated in a contract, this shall be determined in cases involving trademarks or designs by the address for service of the defendant or by the place where the obligation in dispute has arisen, or has been or should be enforced. The place in which the trademark or design is filed or registered shall not under any circumstances be used as the sole basis for determining territorial jurisdiction. 2. Where the criteria mentioned above are insufficient to determine territorial jurisdiction, the petitioner may bring the case before the court of his address for service or residential address, or, if he has no address for service or residential address in Benelux territory, before the court of his choice, either in Brussels, the Hague or Luxembourg. 3. The courts shall apply ex officio the rules specified in paragraphs 1 and 2 and shall expressly confirm their jurisdiction. ...’
31 The BCIP does not appear in the list to which Article 69 of Regulation No 1215/2012 refers.
32 Brite Strike Technologies SA is a company established in Luxembourg which belongs to a network distributing tactical illumination products developed by the American company Brite Strike Technologies Inc.
33 On 4 February 2010, Brite Strike Technologies SA filed the word sign ‘Brite Strike’ for the purposes of its registration as a Benelux mark.
34 The Benelux Intellectual Property Office (Trade Marks and Designs), established in The Hague (Netherlands), registered that mark.
35 On 21 September 2012, Brite Strike Technologies Inc. brought an action before the Rechtbank Den Haag (District Court, The Hague, Netherlands) seeking a declaration of invalidity in respect of that mark, in accordance with Articles 2.4 and 2.28 of the BCIP.
36 By registering the mark at issue, Brite Strike Technologies SA acted in bad faith. Knowing that the word sign ‘Brite Strike’ was used by Brite Strike Technologies Inc. in the Benelux States, Brite Strike Technologies SA had registered that sign as a Benelux trade mark with the sole intention of obtaining an exclusive right to use it and, thereby, prevent Brite Strike Technologies Inc. from continuing to use that sign itself in Benelux.
37 Brite Strike Technologies SA raised an objection of lack of jurisdiction. It argued that the action should have been brought in Luxembourg and not in The Hague.
38 The Rechtbank Den Haag (District Court, The Hague) states that, if the rule of jurisdiction laid down in Article 4.6 of the BCIP were to be applied, that court would lack jurisdiction to adjudicate on the dispute. If, on the other hand, the rule of jurisdiction laid down in Article 22(4) of Regulation No 44/2001 were to prevail, that court might have jurisdiction.
39 Therefore, the relationship between Regulation No 44/2001 and the BCIP must be examined.
40 In that connection, the Rechtbank Den Haag (District Court, The Hague) cites a judgment of the Gerechtshof Den Haag (Regional Court of Appeal, The Hague) of 26 November 2013. In paragraphs 28 to 34 of that judgment, the latter court held that, having regard to the fact that the BCIP was concluded after the entry into force of Regulation No 44/2001, the rule of jurisdiction laid down in Article 22(4) prevails.
41 However, the Rechtbank Den Haag (District Court, The Hague) takes the view that the question of the relationship between Regulation No 44/2001 and the BCIP must be submitted to the Court of Justice.
42 In those circumstances, the Rechtbank Den Haag (District Court, The Hague) decided to stay proceedings and refer the following questions to the Court of Justice for a preliminary ruling: ‘(1) Must BCIP (whether or not on the grounds set out in paragraphs 28 to 34 of the judgment of the Gerechtshof Den Haag (Regional Court of Appeal, The Hague) of 26 November 2013) be considered to be a subsequent convention, with the result that Article 4.6 of the BCIP cannot be considered to be a special rule for the purposes of Article 71 of Regulation No 44/2001? If that question is answered in the affirmative: (2) Does it follow from Article 22(4) of Regulation No 44/2001 that the Belgian, Netherlands and Luxembourg courts all have international jurisdiction to take cognisance of the dispute? (3) If not, how should it be determined, in a case such as the present, whether the Belgian, Netherlands or Luxembourg courts have international jurisdiction? Can Article 4.6 of the BCIP (nonetheless) be applied with a view to (further) determining international jurisdiction?’
43 It must be observed from the outset that a dispute such as that between Brite Strike Technologies Inc. and Brite Strike Technologies SA may fall within the scope of both the BCIP and that of Regulation No 44/2001.
44 On one hand, that dispute concerns the validity of the registration of a Benelux trade mark and, as is clear from the order for reference, will be decided on the basis of Articles 2.4 and 2.28 of the BCIP.
45 On the other hand, it necessarily follows from the inclusion of ‘in proceedings concerned with the registration or validity of … trade marks, designs’ in Chapter II, Section 6, of Regulation No 44/2001, that the validity of the registration of trade marks falls within ‘civil and commercial matters’ referred to in Article 1(1) thereof.
46 Since the rule of jurisdiction laid down in Article 22(4) of Regulation No 44/2001 is irreconcilable with the rule of jurisdiction specifically provided for in Article 4.6 of the BCIP for disputes relating to Benelux trade marks and designs, it must be determined which of those two provisions is applicable.
47 It is in that context that, by its first question, the referring court asks essentially whether Article 71 of Regulation No 44/2001 must be interpreted as meaning that it precludes the rules of jurisdiction for disputes relating to Benelux trade marks and designs laid down in Article 4.6 of the BCIP from being applied to those disputes.
48 Article 71 of Regulation No 44/2001 appears in Chapter VII thereof, entitled ‘Relations with other instruments’, and provided, in paragraph 1 thereof, that that regulation ‘shall not affect any conventions to which the Member States are parties and which in relation to particular matters, govern jurisdiction or the recognition or enforcement of judgments’.
49 Despite the use of the words ‘conventions to which the Member States are parties’, which suggests that only the conventions concluded by all the Member States are covered by that article, it is clear from the wording of paragraph 2(a) thereof that the conventions referred to also included those which had been concluded only by some of the Member States.
50 Furthermore, it follows from a combined reading of Articles 69 and 71 of Regulation No 44/2001 that the latter article, the general terms of which have been set out above, is not to be interpreted as meaning that it would apply with regard to conventions binding several Member States only on condition that one or more third countries are also parties to such conventions.
51 It follows that the relationship between the rules of jurisdiction laid down by Regulation No 44/2001 and those contained in certain conventions concluded between Member States was governed, in favour of those conventions, by Article 71 of Regulation No 44/2001. However, that provision did not enable the Member States, by concluding new specialised conventions or amending conventions already in force, to introduce rules which would prevail over those of that regulation (judgment of 4 May 2010 in TNT Express Nederland, C‑533/08, EU:C:2010:243, paragraph 38).
52 In that context, it must be recalled that Article 71 of Regulation No 44/2001 replaced Article 57 of the Brussels Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters (OJ 1978 L 304, p. 36) which, with regard to conventions on specific matters, refers to conventions to which the Member States ‘are or will be’ parties. By the use of the words ‘or will be’, Article 57 of the Brussels Convention made it clear that the rules contained therein did not preclude the application of different rules to which the Contracting States would agree in the future through the conclusion of specialised conventions. Those words were not reproduced in Article 71(1) of Regulation No 44/2001 (judgment of 4 May 2010 in TNT Express Nederland, C‑533/08, EU:C:2010:243, paragraphs 37 and 38).
53 The limitation on the scope of Article 71 of Regulation No 44/2001, set out in paragraph 51 of the present judgment, reflects the settled case-law stating that, as and when common rules come into being, the Member States no longer have the right to conclude international agreements affecting those rules (judgment of 4 May 2010 in TNT Express Nederland, C‑533/08, EU:C:2010:243, paragraph 38).
54 That limitation also applies with respect to the conclusion by the Member States of agreements between themselves. In the light of the primacy enjoyed as a general rule by EU law with regard to conventions concluded between the Member States (see, in particular, judgment of 27 September 1988 in Matteucci, 235/87, EU:C:1988:460, paragraph 22 and the case-law cited), the conclusion between the Member States of conventions affecting the common rules of the EU is, in principle, prohibited.
55 In the present case, it must be determined whether the BCIP and that limitation are incompatible, which would have as a consequence that Article 71 of Regulation No 44/2001 does not authorise the application of Article 4.6 of the BCIP instead of Article 22(4) of that regulation.
56 In that examination, account must be taken of the fact that the BCIP is an agreement concluded between the Kingdom of Belgium, the Grand Duchy of Luxembourg and the Kingdom of the Netherlands in the framework of their regional union, Benelux. Therefore, Article 71 of Regulation No 44/2001 must be interpreted in the light of Article 350 TFEU, which provides that EU law does not preclude the existence or completion of that regional union, in so far as the objectives it pursues are not attained by the application of EU law.
57 Thus, the Court has already held that that provision enables the Kingdom of Belgium, the Grand Duchy of Luxembourg and the Kingdom of the Netherlands to leave in force, by way of derogation from the EU rules, the rules which apply within their regional union, in so far as that regional union is further advanced than the internal market (see, as regards Article 233 EEC, whose wording was reproduced in Article 306 EC and then in Article 350 TFEU, judgments of 16 May 1984 in Pakvries, 105/83, EU:C:1984:178, paragraph 11, and 2 July 1996 in Commission v Luxembourg, C‑473/93, EU:C:1996:263, paragraph 42). In order to be justified, that derogation must also be indispensable for the proper functioning of the Benelux regime (judgment of 11 August 1995 in Roders and Others, C‑367/93 to C‑377/93, EU:C:1995:261, paragraphs 25 and 40).
58 As regards the first of those requirements, it must be recalled that the implementation of the internal market in matters of trade marks and designs contains, first, the unitary rights regime governed by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21), and by Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), the partial harmonisation of the rules on trade marks and designs of the Member States achieved by Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25) and Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (OJ 1998 L 289, p. 28).
59 In the context of Benelux, the trade marks and designs of the three Member States concerned have been replaced by rights with unitary effect. That regime, which exists in parallel to that relating to the unitary rights of the EU, is, while integrating the partial harmonisation achieved by Directive 2008/95 and Directive 98/71, in advance of it. Benelux trade marks and designs are subject to completely uniform rules and common institutional and procedural rules. Among the latter is Article 4.6 of the BCIP.
60 As regards the second requirement, set out in paragraph 57 of the present judgment, any derogation, in order to be justified by Article 350 TFEU, must be indispensable for the proper functioning of the Benelux regime at issue, having regard to the objective of Article 350 TFEU, which is to prevent the application of EU law from causing the disintegration of the Benelux Union or from hindering its development (judgments of 16 May 1984 in Pakvries, 105/83, EU:C:1984:178, paragraph 11, and 2 July 1996 in Commission v Luxembourg, C‑473/93, EU:C:1996:263, paragraph 42).
61 As regards Article 4.6 of the BCIP, it must be observed that the rule of EU law from which that provision derogates is that relating to the jurisdiction in disputes relating to trade marks and designs in Article 22(4) of Regulation No 44/2001 and, since 10 January 2015, in Article 24(4) of Regulation No 1215/2012. That rule of EU law establishes as the criterion for jurisdiction the place where the register is kept (judgment of 13 July 2006 in GAT, C‑4/03, EU:C:2006:457, paragraph 22).
62 In that connection, it must be observed that, for disputes relating to EU trade marks, the EU legislature itself, in accordance with Article 67 of Regulation No 44/2001, also derogated from that rule of jurisdiction by providing, in Article 97 of Regulation No 207/2009, for a different rule of jurisdiction which is based, in particular, on the defendant’s domicile, thereby ensuring that in each Member State the courts may be seised of dispute relating to EU trade marks. That rule avoids those disputes being concentrated before the courts of the Kingdom of Spain, the Member State on whose territory the filing and registration of trade marks is centralised and the register is kept.
63 Having regard to the fact that Benelux trade marks and designs fall within a regime in the three Member States concerned which is in advance of the jurisdictional structure established by Benelux, based on a decentralised system and a mechanism for referring questions for a preliminary ruling to the Benelux Court of Justice and the multilingual character of that regional union, the codified rule in Article 4.6 of the BCIP, which is founded in particular on the defendant’s domicile and thereby ensures that the disputes relating to Benelux trade marks and designs may be dealt with, as the case may be, by a Belgian, Luxembourg, or Dutch court, instead of being concentrated, pursuant to Article 22(4) of Regulation No 44/2001 and then Article 24(4) of Regulation No 1215/2012, before the Dutch courts where the filing and registration of trade marks is centralised and the register is kept, may, as the Advocate General observed in point 41 of his Opinion and by analogy with the findings of the EU legislature regarding jurisdiction for disputes relating to EU trade marks, must be treated as indispensable for the proper functioning of the Benelux regime of trade marks and designs.
64 It follows that Article 71 of Regulation No 44/2001, read in the light of Article 350 TFEU, does not prevent the Kingdom of Belgium, the Grand Duchy of Luxembourg and the Kingdom of the Netherlands from maintaining in force, in derogation from Article 22(4) of Regulation No 44/2001 and Article 24(4) of Regulation No 1215/2012, the rule of jurisdiction for disputes on Benelux trade marks and designs, laid down in Article 37(A) of the BLT and Article 29(1) of the BLD and then confirmed in Article 4.6 of the BCIP.
65 As far as concerns the case-law of the Court according to which the application of a convention in derogation from a rule laid down by the EU on jurisdiction, recognition and enforcement cannot compromise the principles which underlie judicial cooperation in civil and commercial matters in the European Union, such as the principles, recalled, with regard to jurisdiction in recitals 11 and 12 in Regulation No 44/2001, of legal certainty for litigants and the sound administration of justice (see, in particular, judgments of 4 May 2010 in TNT Express Nederland, C‑533/08, EU:C:2010:243, paragraph 49, and 19 December 2013 in Nipponkoa Insurance, C‑452/12, EU:C:2013:858, paragraph 36), it must be held that a provision such as Article 4.6 of the BCIP, which is founded on the principle that jurisdiction is generally based on the defendant’s domicile, and supplemented by other forums having a close link with the subject matter of the dispute, is consistent with the principles set out in recitals 11 and 12.
66 Having regard to all of the foregoing considerations, the answer to the first question is that Article 71 of Regulation No 44/2001, read in the light of Article 350 TFEU, does not preclude the application to those disputes of the rule of jurisdiction for disputes relating to Benelux trademarks and designs, laid down in Article 4.6 of the BCIP.
67 In the light of the answer to the first question and the inapplicability of Article 22(4) of Regulation No 44/2001 which results from that, there is no need to respond to the second and third questions.
68 Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.