OPINION OF ADVOCATE GENERAL
SZPUNAR
delivered on 3 May 2017 (1)
Case C‑231/16
Merck KGaA
v
Merck & Co. Inc.,
Merck Sharp & Dohme Corp.,
MSD Sharp & Dohme GmbH
(Request for a preliminary rulingfrom the Landgericht Hamburg (Regional Court, Hamburg, Germany))
(Reference for a preliminary ruling — EU trade mark — Regulation (EC) No 207/2009 — Lis pendens — Article 109(1) — Simultaneous actions on the basis of an EU trade mark and a national trade mark — Meaning of ‘the same parties’ — Economically linked companies using the same trade mark — Meaning of ‘same cause of action’ — Use of the name ‘Merck’ on internet sites and online platforms — One action based on a national trade mark followed by another based on an EU trade mark — Partial lack of jurisdiction of the second court seised, as regards part of the European Union)
Introduction
1. The present request for a preliminary ruling provides the Court, for the first time, with the opportunity to interpret the lis pendens rule contained in Article 109(1) of Regulation (EC) No 207/2009, (2) which is applicable where simultaneous actions are brought on the basis of EU trade marks and national trade marks.
2. The request — which is only one episode in a legal battle between two undertakings known worldwide, over the use of the name ‘Merck’ — has been made in the course of infringement proceedings brought by Merck KGaA before a German court, sitting in its capacity as an EU trade mark court.
3. The applicant company seeks to prevent the three defendants in the main proceedings — Merck & Co. Inc., Merck Sharp & Dohme Corp. and MSD Sharp & Dohme GmbH — from using the word ‘Merck’, which is protected by the EU trade mark, on internet sites accessible in the European Union and on the Facebook, Twitter and YouTube online platforms.
4. When the German court became seised, an action was already pending between those same companies, with the exception of one of the defendants, before a court of the United Kingdom. These parallel proceedings comprise, amongst other things, an action for infringement based on the use of the term ‘Merck’, to which the national trade marks relate, on the internet.
5. The crux of the issue raised by the present request lies in the interpretation of the manner in which Article 109(1)(a) of Regulation No 207/2009 applies in a situation where the court first seised is hearing proceedings, brought on the basis of national trade marks, for infringement within the territory of a Member State, while the second court seised is an EU trade mark court with jurisdiction in respect of the entire European Union.
Legal context
6. Article 109(1) of Regulation No 207/2009 provides as follows:
‘Where actions for infringement involving the same cause of action and between the same parties are brought in the courts of different Member States, one seised on the basis of an [EU] trade mark and the other seised on the basis of a national trade mark:
(a) the court other than the court first seised shall of its own motion decline jurisdiction in favour of that court where the trade marks concerned are identical and valid for identical goods or services. The court which would be required to decline jurisdiction may stay its proceedings if the jurisdiction of the other court is contested;
(b) the court other than the court first seised may stay its proceedings where the trade marks concerned are identical and valid for similar goods or services and where the trade marks concerned are similar and valid for identical or similar goods or services.’
The main proceedings
7. The applicant in the main proceedings is the parent company of the German group Merck, which operates in the chemical and pharmaceutical sector. Its history goes back to the 17th century.
8. The defendants in the main proceedings, two American companies and the German subsidiary of one of them, belong to the Merck & Co. group (Merck Sharp & Dohme), which is one of the world’s largest pharmaceutical undertakings. Historically, this group grew out of the former American subsidiary of the German group ‘Merck’. Since 1919, the two groups have been entirely separate in economic terms.
9. Following this separation, several coexistence agreements were entered into between the German group and the American group regarding the use of the trade marks protecting the name Merck. Those agreements include one dated 1 January 1970, made between the applicant in the main proceedings and Merck & Co.
10. The applicant in the main proceedings is the proprietor of several trade marks protecting that name, including national marks protected in the United Kingdom, and the EU word mark ‘Merck’, registered for goods in classes 5, 9 and 16, and services in class 42, of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.
11. The defendants in the main proceedings operate several internet sites using the name ‘Merck’. The functioning of those internet sites does not involve geographical targeting of information, the content thus being accessible in the same form throughout the world, and therefore throughout the European Union. The defendants in the main proceedings have also established other forms of internet presence, more specifically on the Facebook, Twitter and YouTube platforms.
12. On 8 March 2013, the applicant in the main proceedings brought an action against the first two defendants in the main proceedings, as well as three other companies belonging to the same group, before the High Court of Justice (England and Wales), Chancery Division (United Kingdom). That action alleges breach of the agreement of 1 January 1970 as well as infringement of national and international trade marks protected in the United Kingdom, by reason of the use of the name ‘Merck’ by the defendants in the main proceedings, on the internet.
13. On 11 March 2013, the applicant in the main proceedings also brought an action for infringement before the referring court, the Landgericht Hamburg (Regional Court, Hamburg, Germany), against the defendants in the main proceedings, based on the EU trade mark Merck and on the use of the name ‘Merck’ on their internet sites and on the Facebook, Twitter and YouTube platforms.
14. By pleadings of 11 November 2014 and of 12 March, 10 September and 22 December 2015, the applicant in the main proceedings withdrew its action in so far as it related to the territory of the United Kingdom. This withdrawal has been opposed by the defendants in the main proceedings.
15. The defendants in the main proceedings maintain that the action pending before the referring court is inadmissible having regard to Article 109(1)(a) of Regulation No 207/2009, at least in so far as it concerns the plea alleging that the EU trade mark held by the applicant in the main proceedings has been infringed in the entire European Union. The partial withdrawal declared by the applicant in the main proceedings is said to be irrelevant in this regard.
16. The applicant in the main proceedings, for its part, maintains that since, in the second proceedings, it relies on the rights conferred on it by the EU trade mark, which are valid throughout the European Union, Article 109(1)(a) of Regulation No 207/2009 is not applicable, and that in any event, that provision is no longer applicable because of the partial withdrawal as regards the territory of the United Kingdom.
17. The referring court expresses doubt as to the interpretation of Article 109(1)(a) of Regulation No 207/2009 having regard to the circumstances of the present case. It is inclined to the view that the two actions at issue are the same and that the wording of that provision does not enable it to decline jurisdiction in part, as regards one Member State only. It also expresses uncertainty as to whether it is Article 109(1)(a) or (1)(b) of Regulation No 207/2009 which should be applied, pointing out that the EU trade mark relied on before it covers a more extensive list of goods and services than the national trade mark relied on before the United Kingdom court.
Questions referred and procedure before the Court
18. In those circumstances, the Landgericht Hamburg (Regional Court, Hamburg) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:
‘(1) Must the term “same cause of action” in Article 109(1)(a) of [Regulation No 207/2009] be interpreted as applying to the maintenance and use of a worldwide, and therefore also EU-wide, identical online internet presence under the same domain name, on account of which actions for infringement between the same parties have been brought before the courts of different Member States, one action being for infringement of an EU trade mark and the other being for infringement of a national trade mark?
(2) Must the term “same cause of action” in Article 109(1)(a) of Regulation No 207/2009 be interpreted as applying to the maintenance and use of worldwide, and therefore also EU-wide, identical online content on the internet domain names “facebook.com” and/or “youtube.com” and/or “twitter.com”, in each case — as regards the relevant domain names “facebook.com” and/or “youtube.com” and/or “twitter.com” — under the same username, on account of which actions for infringement between the same parties have been brought before the courts of different Member States, one action being for infringement of an EU trade mark and the other being for infringement of a national trade mark?
(3) Must Article 109(1)(a) of Regulation No 207/2009 be interpreted as meaning that when a “court other than the court first seised” of a Member State is seised of an “action for infringement” of an EU trade mark through the maintenance of a worldwide, and therefore also EU-wide, identical online website under the same domain name, and claims have been put forward to it under Article 97(2) and Article 98(1)(a) of [Regulation No 207/2009] in relation to acts of infringement committed or threatened within the territory of any of the Member States, it must decline jurisdiction under Article 109(1)(a) of Regulation No 207/2009 only for the territory of the other Member State in which a court had been “first” seised of a claim for infringement of a national trade mark (which is identical to and covers identical goods as the EU trade mark asserted before the “court other than the court first seised”) through the maintenance and use of the same worldwide, and therefore also EU-wide, identical online internet presence under the same domain name, to the extent that both the marks themselves and the goods and services covered are identical, or, in such a situation, must the “court other than the court first seised”, to the extent that both the marks themselves and the goods and services covered are identical, decline jurisdiction with regard to all claims put forward before it under Article 97(2) and Article 98(1)(a) of Regulation No 207/2009 in relation to acts of infringement committed or threatened within the territory of any of the Member States and therefore in relation to EU-wide claims?
(4) Must Article 109(1)(a) of Regulation No 207/2009 be interpreted as meaning that when a “court other than the court first seised” of a Member State is seised of an “action for infringement” of an EU trade mark on account of the maintenance of worldwide, and therefore also EU-wide, identical online content on the internet domain names “facebook.com” and/or “youtube.com” and/or “twitter.com”, each — as regards the relevant domain names of “facebook.com” and/or “youtube.com” and/or “twitter.com” — under the same username, and claims have been put forward to it under Article 97(2) and Article 98(1)(a) of [Regulation No 207/2009] in relation to acts of infringement committed or threatened within the territory of any of the Member States, it must decline jurisdiction under Article 109(1)(a) of [Regulation No 207/2009] only for the territory of the other Member State in which a court was “first” seised of a claim for infringement of a national trade mark (which is identical to and covers identical goods as the EU trade mark asserted before the “court other than the court first seised”) through the maintenance and use of the same worldwide, and therefore also EU-wide, identical online content on the internet domain names “facebook.com” and/or “youtube.com” and/or “twitter.com”, each — as regards the relevant domain names “facebook.com” and/or “youtube.com” and/or “twitter.com” — under the same username, to the extent that both the marks themselves and the goods and services covered are identical, or in such a situation must the “court other than the court first seised”, to the extent that the marks themselves and the goods and services covered are identical, decline jurisdiction with regard to all claims put before it under Article 97(2) and Article 98(1)(a) of [Regulation No 207/2009] in relation to the acts of infringement committed or threatened within the territory of any of the Member States and therefore in relation to EU-wide claims?
(5) Must Article 109(1)(a) of [Regulation No 207/2009] be interpreted as meaning that the withdrawal of an action — brought before the “court other than the court first seised” of a Member State, for infringement of an EU trade mark infringement through the maintenance of a worldwide, and therefore also an EU-wide, identical online internet presence under the same domain name, in which claims had initially been put forward under Article 97(2) and Article 98(1)(a) of [Regulation No 207/2009] in relation to acts of infringement committed or threatened within the territory of any of the Member States — in relation to the territory of the other Member State in which a court was “first seised” of a claim for infringement of a national trade mark (that is identical to and covers identical goods as an EU trade mark asserted at the “court other than the court first seised”) through the maintenance and use of the same worldwide, and therefore also EU-wide, identical online internet presence under the same domain name, precludes a declining of jurisdiction by the “court other than the court first seised” under Article 109(1)(a) of [Regulation No 207/2009] to the extent that the marks themselves and the goods and services covered by the marks are identical?
(6) Must Article 109(1)(a) of [Regulation No 207/2009] be interpreted as meaning that the withdrawal of an action — brought before a “court other than the court first seised” of a Member State, on account of infringement of an EU trade mark through the maintenance of worldwide, and therefore also EU-wide, identical online content of the internet domain names “facebook.com” and/or “youtube.com” and/or “twitter.com”, each — as regards the relevant domain names “facebook.com” and/or “youtube.com” and/or “twitter.com” — under the same username, with which claims had initially been made under Article 97(2) and Article 98(1)(a) of [Regulation No 207/2009] in relation to acts of infringement committed or threatened within the territory of any of the Member States — in relation to the territory of the other Member State in which a court was first seised of a claim for infringement of a national mark (that is identical to and covers identical goods as an EU trade mark asserted at the “court other than the court first seised”) through the maintenance and use of the same worldwide, and therefore also EU-wide, identical online content on the internet domain names “facebook.com” and/or “youtube.com” and/or “twitter.com”, each — as regards the relevant domain names of “facebook.com” and/or “youtube.com” and/or “twitter.com” — under the same username, precludes a declining of jurisdiction by the “court other than the court first seised” under Article 109(1)(a) of [Regulation No 207/2009] to the extent that the marks themselves and the goods and services covered by the marks are identical?
(7) Must Article 109(1)(a) of [Regulation No 207/2009] be interpreted as meaning that it follows from the wording “where the trade marks concerned are identical and valid for identical goods or services” that, in a situation where the marks are identical, the “court other than the court first seised” is without jurisdiction only in so far as the EU trade mark and the earlier national trade mark are registered for the same goods and/or services, or is the “court other than the court first seised” entirely without jurisdiction, even when the EU trade mark asserted before that court also protects additional goods and/or services that are not protected by the other national mark, for which the contested acts may be identical or similar?’
19. The order for reference was received at the Court Registry on 25 April 2016. Written observations were submitted by the parties in the main proceedings and by the European Commission. The parties to the main proceedings and the Commission presented oral arguments at the hearing, which took place on 15 February 2017.
Analysis
Preliminary observations
20. The request for a preliminary ruling in this matter will provide the Court with the opportunity to consider, for the first time, several aspects of the lis pendens rule applicable in EU trade mark law, contained in Article 109(1) Regulation No 207/2009.
21. First, as is apparent from the Commission’s written observations and from the inter partes argument at the hearing, the facts described in the order for reference give rise to doubt as to whether the ‘same parties’ condition is met. The action before the referring court was brought against the German subsidiary of the American group, which is not involved in the first proceedings. In my view it is appropriate to consider this issue — notwithstanding that it is not raised in the questions referred — in order to provide the referring court with clarification as to all relevant aspects of Article 109(1) of Regulation No 207/2009.
22. Secondly, I will analyse the issue which is central to the present case, which relates to the interpretation of the same actions condition in Article 109(1)(a) of Regulation No 207/2009. This analysis will also cover the question of whether the second court seised must decline jurisdiction in part, as regards part of the territory of the European Union (which relates to the first to fourth of the questions referred).
23. Thirdly, although the answers to the previous questions should enable the referring court to determine whether the lis pendens exception applies, I will nevertheless examine the two other aspects of the request for a preliminary ruling. These concern, first, whether the partial withdrawal is to be taken into account in assessing whether there is a situation of lis pendens (which relates to the fifth and sixth of the questions referred) and, secondly, the boundary between Article 109(1)(a) and (b) of Regulation No 207/2009 (the seventh question referred).
The lis pendens rule contained in Article 109(1)(a) of Regulation No 207/2009
24. Article 94(1) of Regulation No 207/2009 makes a general reference to the provisions of Regulation (EC) No 44/2001. (3)
25. That reference is subject to specific rules. Article 109(1) of Regulation No 207/2009 lays down such a specific rule as regards simultaneously pending civil actions based on EU trade marks and on national marks.
26. The justification for that rule lies in the coexistence of the EU trade mark and national trade marks, which is a characteristic feature of the trade mark protection system in the EU.
27. The objective of the rule in Article 109(1) of Regulation No 207/2009 accords, essentially, with that of the lis pendens rules contained in Article 27 of the Brussels I Regulation. (4) That objective consists in avoiding contradictory judgments being given in parallel actions between the same parties and involving the same cause of action. (5)
28. However, Article 109(1) of Regulation No 207/2009 deals with the issue of lis pendens in a very limited context, that of two parallel actions for infringement, one based on an EU trade mark and the other on an identical national mark.
29. In relation, therefore, to legislation drawing directly on the lis pendens rules contained in the Brussels Convention, (6) and subsequently restated in the Brussels I Regulation, the Court’s case-law as to the interpretation of the convention and regulation remains entirely relevant. (7)
30. That conclusion is supported by the fact that Regulation No 207/2009 does not cover all situations of lis pendens involving an EU trade mark. Parallel actions brought before the courts of different Member States on the basis of the same EU trade mark, for example, are covered by the lis pendens rules contained in the Brussels I Regulation (or, in relation to actions brought on and after 10 January 2015, the Regulation No 1215/2012). (8)
31. It follows that the concept of lis pendens underlying Article 109(1) of Regulation No 207/2009 must necessarily be the same as that underlying Article 27(1) of the Brussels I Regulation.
32. The concepts used in Articles 27 of the Brussels I Regulation to determine whether a situation of lis pendens exists are independent of the analogous concepts already existing in national law. (9)
33. The Court has interpreted the concept of lis pendens by laying down a three-fold test: the parties must be the same; the causes of action must be the same, and the object of the actions must be the same. In this regard, the Court has based its reasoning on the wording of Article 21 of the Brussels Convention in the French and other language versions, without reference to the fact that the German and English versions do not distinguish the concept of ‘object’ from that of ‘cause of action’. (10)
34. The interpretation of Article 109(1)(a) of Regulation No 207/2009 gives rise to a similar linguistic difficulty. The English version of Article 109(1)(a) of Regulation No 207/2009 uses the same expression as that used in Article 27(1) of the Brussels I Regulation, (11) whereas the French and German versions use different wording. (12)
35. Nevertheless, given that the rule concerned clearly draws on the lis pendens rules formulated in the context of the Brussels Convention, in my view this linguistic divergence should be disregarded. In interpreting Article 109(1) of Regulation No 207/2009, the starting point should be that that provision is based on the same concept of lis pendens as Article 27(1) of the Brussels I Regulation — incorporating the three-fold test under which the parties, the cause of action and the object of the actions must be the same. (13)
36. The difference between the lis pendens rules of Article 109 and those of the Brussels I Regulation relates to the fact that, in the former case, the requirement for the actions to be the same is met despite the difference in their formal legal basis — one being based on an EU trade mark and the other on a national trade mark — where the marks at issue are identical and valid for the same goods or services.
Whether the parties are the same
37. It is apparent from the order for reference that the second action commenced in this matter names a party as defendant which was not a defendant in the first action, namely the German subsidiary of the group constituted by the first two defendants in the main proceedings.
38. It is thus necessary to consider whether the two actions are between the same parties.
39. Where parallel proceedings have only some parties in common, the second court seised is required to decline jurisdiction only to the extent to which the parties to both sets of proceedings are the same, and the action before it can thus continue between the other parties. (14)
40. In principle, in order for the parties to be the same, they must be the same persons.
41. Nevertheless, in certain exceptional circumstances, the requirement may be met even if the parties to the parallel proceedings are different persons.
42. The Court has accepted that it is conceivable for the interests of the two parties, in relation to the subject matter of the proceedings, to be regarded as identical and indissociable to such an extent that they must be considered to be one and the same party for the purposes of application of the lis pendens rules. (15)
43. In my opinion such exceptional circumstances exist in the case of two parallel actions for infringement — such as those to which the present case relates — involving the same sign used by companies which are economically linked.
44. Within a group of companies, control of intellectual property rights, including trade mark rights, must be given to one of the legal persons, often the parent company, even though, in practice, the signs may be used in the same way by all group companies.
45. In those circumstances, the interests of the companies concerned, notwithstanding that they are distinct persons, exhibit such unity that those companies can be regarded as being one and the same party for the purposes of the objective of avoiding contradictory judgments in trade mark matters. (16)
46. I therefore consider that, in circumstances such as those of the present case, two parallel actions for infringement, one brought against the parent company and the other against that same company and its subsidiary, must be regarded as proceedings between the same parties where the actions relate to the use of the same sign by economically connected entities. It will, of course, be for the national court to apply those criteria in the main proceedings.
Whether the actions for infringement are the same
47. As I have already observed, Article 109(1) of Regulation No 207/2009 is based on the same concept of lis pendens as Article 27(1) of the Brussels I Regulation.
48. It is apparent from the case-law relating to the Brussels I Regulation that, in order to be caught by a lis pendens rule, actions must have the same ‘cause of action’, that is, the same factual and legal basis, (17) and the same ‘object’, that is, the end the action has in view. (18)
49. Thus the actions need not be ‘identical’ in the strict sense, but must coincide as regards their cause of action and object. (19)
50. In my view, Article 109(1)(a) of Regulation No 207/2009 is based on the same considerations, in that it provides that it is applicable to actions for infringement which involve the same cause of action and are based on identical national and EU trade marks.
51. In the present case, in relation to the cause of action relied on in the proceedings, it is apparent from the order for reference that the two actions have legal bases which are regarded as similar for the purposes of the lis pendens rule in Article 109(1)(a) of Regulation No 207/2009, namely the exclusive rights arising from national trade marks and from an identical EU trade mark.
52. Furthermore, the two actions involve matters of fact which overlap to some extent, in that they relate to the use of the sign ‘Merck’ on the same internet sites.
53. The difficult points of interpretation to which this dispute gives rise relate to the territorial aspect of the actions.
54. Although both actions seek to prohibit the use of the same sign, the scope of the allegations of infringement made in them, as well as the territorial effect of the prohibitions, overlap only in part.
55. Thus, in the circumstances of the present case, the jurisdiction of the court seised of the first action is limited to the territory of the United Kingdom, whereas the second action has been brought before an EU trade mark court, pursuant to Article 97(1) to (4) of Regulation No 207/2009, that court having jurisdiction to determine whether acts of infringement have taken place within the territory of any Member State and to impose an EU-wide prohibition.
56. What is the impact of that difference on the assessment of whether the cause of action and the object of the two actions are the same?
57. The parties differ on this point. The applicant in the main proceedings considers that the difference in territorial scope between the two actions means that they cannot be regarded as the same. The defendants in the main proceedings, for their part, maintain that the situation at issue involves two actions which are the same for the purposes of Article 109(1)(a) of Regulation No 207/2009.
58. The Commission, for its part, states that the requirement for the ‘cause of action’ to be the same must refer to infringement of the same trade marks within the territory of the same Member States. It considers that the concept of ‘the same cause of action’ must be understood, in the context of Article 109(1)(a) of Regulation No 207/2009, as relating to two actions not only concerning infringement of the same trade marks, but also concerning the same territory.
59. I note that the question raised by the present dispute relates to an issue on which academic opinion is divided into two camps.
60. On the first view, Article 109(1)(a) of Regulation No 207/2009 precludes a second action for infringement in relation to the same trade mark, regardless of the territorial aspects of the two actions. In other words, that provision requires the second court seised on the basis of an EU trade mark to decline jurisdiction, even where the first action is based on a national trade mark and therefore concerns allegations of infringement limited to the territory of the Member State in question. (20)
61. On the second view, two infringing acts alleged in simultaneous actions, one based on a national trade mark and the other on an EU trade mark, are only the same where the facts relate to the same territory. The EU trade mark court is not required to decline jurisdiction to the extent that the territorial scope of the dispute before it is broader than that of the dispute before the national court which was first seised. (21) The same doubt concerning the two possible interpretations of Article 109(1)(a) is reflected in certain national judgments. (22)
62. Common to those two views is an acceptance that the wording of Article 109(1)(a) of Regulation No 207/2009 is problematic. Understood in a broad sense, it creates a lacuna in the judicial protection of the proprietor of an EU trade mark. This would lie in the impossibility of bringing an action seeking to protect the proprietor’s rights at European level, where a simultaneous action based on the national trade mark is pending before a court having jurisdiction, in infringement matters, limited to the territory of a single Member State. (23)
63. In my view, regard must be had to the scheme of the provision in order to resolve this doubt as to its interpretation.
64. The objective pursued by Article 109(1) of Regulation No 207/2009 is a product of the interaction between two principles, namely, on the one hand, the unitary nature of the EU trade mark, and, on the other, the coexistence of that trade mark with national trade marks, leading to the need to avoid contradictory judgments.
65. The link between those principles is apparent from the objectives described in recitals 16 and 17 of Regulation No 207/2009. According to those recitals, decisions regarding the validity and infringement of EU trade marks must have effect and cover the entire European Union. Furthermore, contradictory judgments should be avoided in actions which involve the same acts and which are brought on the basis of an EU trade mark and parallel national trade marks. (24)
66. The interaction of those two objectives would be undermined if Article 109(1)(a) of Regulation No 207/2009 were interpreted broadly, as preventing the proprietor of an EU trade mark from relying on the EU-wide effect of such a trade mark where a simultaneous action is pending, based on a national trade mark and relating to infringement in a more limited territory. Such an interpretation would undoubtedly contribute to achieving the objective of avoiding contradictory judgments, but it would endanger the objective of ensuring that decisions on infringement of an EU trade mark have effect across the entire European Union.
67. By contrast, a balance between those two objectives can be fully ensured by interpreting Article 109(1)(a) of Regulation No 207/2009 as being applicable only to parallel actions which relate to the same territory. Such an interpretation ensures, firstly, that the proprietor of an EU trade mark is able to protect its rights at European level, even where there is a simultaneous action based on a national trade mark. Secondly, it enables contradictory judgments to be avoided, inasmuch as the territorial jurisdiction of courts simultaneously seised on the basis of national and EU marks can be clearly delimited.
68. I therefore consider that, in circumstances where the first action is brought on the basis of a national trade mark, in relation to infringement within the territory of the Member State concerned, and the second is brought on the basis of an EU trade mark, in relation to infringement within the territory of that Member State but also in other parts of the European Union, those actions coincide only partly, to the extent of the infringement within the territory in which the national trade mark is protected.
69. That conclusion seems to be to be supported by the more general approach underlying the application of Article 27 of the Brussels I Regulation.
70. In the context of Article 27 of that regulation, the question whether those proceedings have the same cause of action and the same subject matter must be considered in particular in the light of the potential effects of the judgment to be given by the court first seised. Thus, it is appropriate to ask whether a party to the first proceedings would still have something to gain, in the second proceedings, having been successful or unsuccessful in the first proceedings. (25)
71. Accordingly, it is only appropriate to decline jurisdiction on the ground of lis pendens to the extent that the potential effects of the judgments in the two actions overlap. If that principle applies to Article 27 of the Brussels I Regulation, it must also apply to Article 109(1)(a) of Regulation No 207/2009. (26)
72. In circumstances where — as in the present case — the court first seised is ruling on infringement of a national trade mark, success in the first proceedings would not give the proprietor of the EU trade mark such extensive protection as is sought, on the basis of the EU trade mark, in the second proceedings.
73. It is true that Article 109(1)(a) of Regulation No 207/2009 is also intended to avoid a situation where the proprietor of parallel trade marks — an EU trade mark and an identical national trade mark — could bring proceedings before two courts in different Member States in relation to the same infringement.
74. Nevertheless, I observe that such an abuse of process cannot be presumed. In particular, the possibility cannot be ruled out that the proprietor of parallel marks may, in certain situations, have objective reasons for asserting its rights in two parallel actions. That appears to be the position in the present case, given that the infringement relating to the territory of the United Kingdom must be considered in conjunction with the contractual dispute arising out of the coexistence agreement of 1 January 1970.
75. Lastly, the interpretation which I propose seems to me to be supported by still more fundamental considerations, drawing on the principle of effective judicial protection enshrined in Article 47 of the Charter of Fundamental Rights of the European Union.
76. In this regard, I am conscious of the fact that the scope of the lis pendens rules, or of the rules for identifying the competent court generally, cannot, in principle, be altered by reference to the Charter of Fundamental Rights (27). Nevertheless, in my view, where a provision which is at issue is open to two possible readings, it is appropriate to adopt the reading on which it can be ensured that the approach taken is in line with the principle of effective judicial protection. If Article 109(1)(a) of Regulation No 207/2009 were to be interpreted as requiring the EU trade mark court to decline jurisdiction where there is a simultaneous action before a court with a more limited territorial jurisdiction, the judicial protection of the rights of the proprietor of an EU trade mark could be undermined.
77. For all of those reasons, I consider that Article 109(1)(a) of Regulation No 207/2009 must be interpreted as meaning that the cause of action and object of two actions for infringement, the first based on a national trade mark and concerning infringement within the territory of a Member State, and the second brought on the basis of an EU trade mark and concerning infringement in the European Union as a whole, coincide only partly, to the extent that they relate to the territory of the Member State in which that national mark is protected.
Declining jurisdiction partially, in respect of only one part of the EU territory
78. What obligation is incumbent, under Article 109(1)(a) of Regulation No 207/2009, on the second court seised, where the actions for infringement coincide only partly?
79. In principle, where there is a partial overlap between the two actions, the second court seised is only required to decline jurisdiction to the extent necessary to avoid that overlap. (28)
80. That, of course, assumes that it is possible to decline jurisdiction in part in that way, having regard to the nature of the second action.
81. I note in this regard that the Court has already laid down the principles under which the EU trade mark court may, exceptionally, restrict the territorial effect of a judgment in an action for infringement, in two situations. The first is where the applicant has limited the territorial scope of its action, in the exercise of its power freely to determine the scope of the action, and the second is where the EU trade mark tribunal concludes, on the basis of the material which the defendant should, in principle, put before it, that the use of the relevant sign does not create a likelihood of confusion with the EU trade mark in one precisely defined part of the European Union. (29)
82. It seems to me to be appropriate to add a third situation in which the territorial scope of a judgment delivered in an action for infringement of an EU trade mark should be limited. This relates to cases where the EU trade mark court, being the second court seised, must decline jurisdiction in part in order to delimit the scope of simultaneous actions based on national and EU trade marks.
83. Furthermore, I consider that the responsibility for delimiting its territorial jurisdiction, in order to avoid a situation of lis pendens, is not that of the parties to the actions, but of the second court seised.
84. That conclusion is based both on the role of a court in determining its territorial jurisdiction and on the mechanism of the lis pendens rules, which provide for the court to stay the action and subsequently to decline jurisdiction as a consequence of a situation of lis pendens. It is also reflected in the wording of Article 109(1)(a) of Regulation No 207/2009, which requires the second court seised to decline jurisdiction of its own motion.
85. In the light of the foregoing, I consider that Article 109(1)(a) of Regulation No 207/2009 must be interpreted as meaning that, where simultaneous actions brought on the basis of a national and an EU trade mark overlap in part, as regards the territory in which the national trade mark is protected, the EU trade mark court, where it is the second court seised, must of its own motion decline jurisdiction as regards the part of the action which concerns the territory common to both actions.
Alternative reasoning: the consequences of partial withdrawal
86. In the light of the above analysis, it is not necessary to answer the fifth to seventh of the questions referred. I will consider them briefly, in the alternative, in case the Court thinks fit to answer them.
87. By its fifth and sixth questions, which should be considered together, the referring court asks, essentially, whether a partial withdrawal by the applicant in the main proceedings, as regards infringement within the United Kingdom, can be taken into consideration for the purposes of applying Article 109(1)(b) of Regulation No 207/2009.
88. I observe, as a preliminary matter, that the defendants in the main proceedings state that the withdrawal at issue is not effective under the national procedural rules, pursuant to which, in order to take effect unilaterally, a withdrawal must be declared before the hearing. That is a question of national law which is outside the jurisdiction of the Court. I will therefore limit myself to examining the effects of withdrawal from the point of view of Article 109(1)(b) of Regulation No 207/2009.
89. In this regard, the applicant in the main proceedings maintains that the withdrawal in the present case eliminates the overlap between the two actions, such that there is no longer a situation of lis pendens. The defendants in the main proceedings maintain, for their part, that whether there is a situation of lis pendens must be assessed as at the commencement of the proceedings, such that a withdrawal while they are ongoing cannot be taken into account.
90. As far as I am aware, the Court has not previously had the opportunity to rule on the consequences of withdrawal for the application of the lis pendens rules. (30)
91. It is undoubtedly true, given that the lis pendens rules relate to the jurisdiction of the court seised, that the decision in that regard should, in principle, be taken by reference to the situation at the time when the action is brought.
92. Nonetheless, that consideration must be reconciled with the objective of the rules in question, which are intended to avoid contradictory judgments. In my view, where, as a result of a procedural event which occurs during the course of the proceedings, there is no longer any risk of contradiction, that should be taken into account in applying the lis pendens rules. (31)
93. I therefore consider that where, having regard to a partial withdrawal which has taken place during the course of the second proceedings, the simultaneous actions for infringement can no longer be considered to be the same, that must be taken into account in applying Article 109(1)(a) of Regulation No 207/2009.
Alternative reasoning: whether the goods and services are identical
94. By its seventh question, the referring court seeks to establish the distinction between the situations referred to in Article 109(1)(a) and (b) of Regulation No 207/2009.
95. While the relevance of this issue is not expressly set out in the order for reference, the arguments of parties to the main proceedings show that there is a dispute as to whether Article 109(1)(a) of Regulation No 207/2009 applies where the EU trade mark relied on before the second court seised has also been registered for additional goods and services, in comparison to the national trade mark relied on in the first proceedings.
96. In this regard, as the Commission rightly observed, it seems relevant to establish, for the purposes of applying Article 109(1)(a) of Regulation No 207/2009, whether the actions before the two courts involve allegations of infringement of a national trade mark and an EU trade mark, respectively, in relation to the same goods or services. If infringement in relation to the additional goods or services is only alleged before the second court seised, the cause of action of the two actions coincides only partly, so as to lead the court to decline jurisdiction in part.
97. However, as I have pointed out above, this issue is not relevant if the Court follows my proposed answers to the first four questions referred.
Conclusion
98. In the light of the foregoing considerations, I propose that the Court should answer the questions referred for a preliminary ruling by the Landgericht Hamburg (Regional Court, Hamburg, Germany) as follows:
Article 109(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the EU trade mark must be interpreted as meaning that, where two actions for infringement are brought before courts of different Member States, the first on the basis of a national trade mark, concerning infringement within the territory of a Member State, and the second on the basis of an EU trade mark, concerning infringement in relation to the entire territory of the European Union, those actions coincide only partly, to the extent that they concern the territory of that Member State.
The EU trade mark court, where it is the second court seised, must of its own motion decline jurisdiction as regards the part of the action which concerns the territory common to both actions.