OPINION OF ADVOCATE GENERAL
SAUGMANDSGAARD ØE
delivered on 26 May 2016 (1)
Case C‑230/15
Brite Strike Technologies Inc.
v
Brite Strike Technologies SA
(Request for a preliminary ruling from the Rechtbank Den Haag (District Court, The Hague, Netherlands))
(Reference for a preliminary ruling — Judicial cooperation in civil matters — Jurisdiction and enforcement of decisions — Regulation (EC) No 44/2001 — Article 71 — Applicability of a convention relating to a specific matter — Benelux Convention on intellectual property — Convention entering into force after that regulation but restating the content of earlier treaties — Regulation No 44/2001 — Article 22(4) — Dispute relating to a Benelux trade mark — Jurisdiction of the courts of all three Benelux States or the courts of only one of the States — Criteria to be applied, if necessary, in order to identify that State)
I – Introduction
1. The request for a preliminary ruling made by the Rechtbank Den Haag (District Court, The Hague, Netherlands) relates to 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, (2) usually referred to as ‘the Brussels I Regulation’.
2. The request has been made in the course of proceedings which are pending before the Dutch court, proceedings which give rise to an issue in identifying the court which has jurisdiction ratione loci to rule on an action brought by a United States company in order to obtain the annulment of a Benelux trade mark held by a Luxembourg company.
3. Noting that jurisdictional rules specific to cross-border disputes between private individuals in relation to the validity of a trade mark appear in both Article 22(4) of Regulation No 44/2001 and Article 4.6 of the Benelux Convention on Intellectual Property (Trade Marks and Designs), of 25 February 2005 (3) (‘the BCIP’), the referring court expresses uncertainty as to how the provisions of those two instruments interact in cases where their substantive, spatial and temporal scopes overlap.
4. Under Article 71 of Regulation No 44/2001, the entry into force of that regulation did not affect the applicability of conventions to which EU Member States were already parties and which governed jurisdiction in relation to particular matters. The Court is invited to rule on the issue of whether that article gives precedence to the BCIP, given that the BCIP entered into force after Regulation No 44/2001, but restates, particularly in Article 4.6, the substance of earlier Benelux treaties.
5. In the event of the Court holding that the provisions of Regulation No 44/2001 must take precedence over those of the BCIP, the referring court asks it to determine whether it follows from Article 22(4) of that regulation that the courts of the three Benelux states have equal international jurisdiction in respect of a dispute such as that in the main proceedings relate or, if not, to specify the criteria by which the Benelux State whose courts have sole jurisdiction can be identified, possibly by applying Article 4.6 of the BCIP at that stage.
II – Legal framework
A – Regulation No 44/2001
6. Article 2(1) of that regulation provides that, ‘subject to this Regulation, persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State’.
7. The first subparagraph of Article 22(4) of Regulation No 44/2001, which appears in Section 6 of Chapter II thereof, entitled ‘Exclusive jurisdiction’, provides that ‘the following courts shall have exclusive jurisdiction, regardless of domicile: … 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’.
8. The second subparagraph of Article 22(4) stipulates that ‘without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on 5 October 1973’, (4) ‘the courts of each Member State shall have exclusive jurisdiction, regardless of domicile, in proceedings concerned with the registration or validity of any European patent granted for that State’. (5)
9. Article 71 of Regulation No 44/2001, which appears in Chapter VII of that regulation, entitled ‘Relations with other instruments’, provides that:
‘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. The court hearing the action shall, in any event, apply Article 26 of this Regulation;
…’ (6)
10. Regulation No 44/2001 was repealed by Regulation (EU) No 1215/2012, (7) usually referred to as ‘the Brussels Ia Regulation’, but that regulation is not applicable to legal proceedings brought, like the main proceedings, before 10 January 2015. (8) The jurisdictional rules set out in Article 2(1), Article 22(4) and Article 71 of Regulation No 44/2001 were restated in Article 4(1), Article 24(4) and Article 71 of Regulation No 1215/2012, with some modifications which do not affect the general tenor of those provisions. (9) Regulation (EU) No 542/2014 (10) amended Regulation No 1215/2012 more substantially, adding Articles 71a to 71d in order to govern the relationship (11) between that regulation and both the Agreement on a Unified Patent Court (12) and the Benelux Court of Justice Treaty. (13)
B – The BCIP
11. Under Article 5.2 of the BCIP, that convention repealed, with effect from 1 September 2006, both the Benelux Convention Concerning Trademarks of March 19, 1962, (14) to which the Uniform Benelux Law on Marks (15) was annexed, and the Benelux Designs Convention of October 25, 1966, (16) to which the Uniform Benelux Designs Law (17) was annexed.
12. According to the preamble to the BCIP, the objectives of that convention include:
– 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 the law on designs’;
– to ‘provide quick and effective procedures which will allow Benelux regulations to be brought into line with Community regulations and international treaties already ratified by the three High Contracting Parties’, 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 duties through decision-making and executive bodies provided with their own and additional powers’. (18)
13. Essentially restating Article 37 of the BLM (19) and Article 29 of the BDL, (20) Article 4.6 of the BCIP, entitled ‘Territorial jurisdiction’, provides, in relation to disputes between natural or legal persons: (21)
‘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 performed. 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, in either 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.
…’
III – The main proceedings, the questions referred and the procedure before the Court of Justice
14. On 4 February 2010, Brite Strike Technologies SA, which has its headquarters in Luxembourg (Luxembourg), applied for the word sign ‘Brite Strike’ to be registered by the BOIP, which is established in The Hague, as a Benelux mark.
15. On 21 September 2012, Brite Strike Technologies Inc., an American company whose products have been distributed by, amongst others, Brite Strike Technologies SA, brought an action against Brite Strike Technologies SA before the Rechtbank Den Haag (District Court, The Hague) seeking annulment of that trade mark on the basis of Article 2.4 (22) and Article 2.28 (23) of the BCIP, alleging that the defendant had caused it to be registered in bad faith and in breach of its rights as first known user of the sign in question in Benelux territory.
16. Brite Strike Technologies SA raised an objection of lack of territorial jurisdiction, maintaining that the action ought to have been brought in Luxembourg, its place of establishment, because it is the defendant, and not in The Hague, where the mark at issue was registered.
17. According to the referring court, in order to rule on this procedural issue, it is necessary to determine whether the jurisdictional rule set out in Article 4.6 of the BCIP, under which it does not consider that it would have jurisdiction to take cognisance of this dispute, (24) prevail over the jurisdictional rule set out in Article 22(4) of Regulation No 44/2001, under which, by contrast, it considers that it could assume jurisdiction.
18. In this regard, the Rechtbank Den Haag (District Court, The Hague) cites a judgment of the Gerechtshof Den Haag (Court of Appeal, The Hague) of 26 November 2013, (25) in which the latter court held that the jurisdictional rules laid down by Regulation No 44/2001 had to take precedence over those appearing in the BCIP, on the grounds that ‘even if that convention is substantially a continuation of the earlier Benelux arrangements and even if the rules of jurisdiction concerned are identical’, the BCIP ‘postdates the entry into force of Regulation No 44/2001’, ‘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’. (26)
19. The referring court considers that there is nevertheless uncertainty as to the meaning to be given to Article 71 and as to how Article 22(4) of Regulation No 44/2001 is to be applied, if at all, in the context of a dispute such as that in the main proceedings, relating to the validity of a Benelux mark.
20. Against that background, by decision of 13 May 2015 which reached the Court on 20 May 2015, the Rechtbank Den Haag (District Court, The Hague) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:
‘(1) Must the Benelux Convention on Intellectual Property (Trademarks and Designs) (BCIP) (whether or not on the grounds set out in paragraphs 28 to 34 of the judgment of the Gerechtshof Den Haag [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?’
21. Written observations were submitted by the European Commission only. No hearing took place.
IV – Assessment
A – The interpretation of Article 71 of Regulation No 44/2001
1. The subject-matter of the first question referred
22. By its first question, the referring court invites the Court of Justice, essentially, to determine how the jurisdictional rules laid down in Article 4.6 of the BCIP interact with those laid down in Regulation No 44/2001, in the light of Article 71 thereof, in cases where the scopes of those two instruments, which do not overlap completely, coincide in territorial, temporal and material terms.
23. Bearing in mind that the dispute main proceedings relates to the validity of a Benelux trade mark, Article 22(4) of Regulation No 44/2001 is the provision which the referring court more specifically envisages invoking in order to establish its jurisdiction, it being noted that the courts of a different Member State could have jurisdiction if Article 4.6 of the BCIP was instead applied. Nevertheless, it has formulated its first question in such a way as to embrace all the provisions of Regulation No 44/2001. I also consider that the issue of the interaction between these two international instruments does not arise solely from the perspective of Article 22(4) of that regulation. It is possible that, in other situations, other jurisdictional rules laid down by that regulation would compete with those in Article 4.6 of the BCIP in relation to legal proceedings concerning the protection of trade marks and designs. (27) This possibility should not therefore be overlooked in the course of examining the first question referred in this matter, and answering it in a way that will be generally applicable.
24. The purpose of Article 71 of Regulation No 44/2001 is to reserve the applicability of jurisdictional rules contained in conventions concluded by Member States, between themselves or with third States, which relate to ‘particular matters’. (28) The material scope of the BCIP is specialised by comparison to that of that regulation. In this regard, I note that, contrary to the impression that might be given by its shortened title, the scope of the BCIP does not extend to all intellectual property rights, but is limited to ‘trademarks and designs’. (29) As for Regulation No 44/2001, and in particular Article 22(4) thereof, this covers a broader range of intellectual property rights. (30) Accordingly, one might expect the reservation in Article 71 of that regulation to result in the jurisdictional rules laid down in Article 4.6 of the BCIP being applicable to the dispute in the main proceedings, and not the rule laid down in Article 22(4) of the regulation.
25. However, the Court has interpreted the wording of Article 71 as meaning that ‘the rules governing jurisdiction … laid down in the specialised conventions to which the Member States were already party at the time of entry into force of that regulation had, in principle, the effect of precluding the application of provisions of that regulation relating to the same question’, where the dispute falls within the scope of such a convention. (31) It based this restrictive interpretation on the observation that, unlike Article 71, which uses the words ‘are parties’, Article 57 of the Brussels convention, from which Article 71 derives, used the wording ‘are or will be parties’ and thus made it clear that that convention, unlike Regulation No 44/2001, did not preclude the application of different jurisdictional rules to which the Contracting States might agree, even in the future, by concluding specialised conventions. (32)
26. The Rechtbank Den Haag (District Court, The Hague) asks the Court how these principles of interaction are to be applied in the present case, given that the BCIP was undoubtedly concluded after the date on which Regulation No 44/2001 (33) entered into force, but that its purpose was essentially to consolidate two Benelux conventions which had been concluded before that date. (34) In other words, it asks whether the BCIP should be classified as a subsequent convention to that regulation, which in its view would result, as the Gerechtshof Den Haag (Court of Appeal, The Hague) has held in another matter, (35) in the provisions of the latter instrument, and not those of the convention, being applicable in the main proceedings.
27. The Commission suggests that the answer to the first question referred should be that, because of the date of its entry into force, the BCIP does not fall within the scope of ratione temporis of the reservation provided for in Article 71 of Regulation No 44/2001 and that, accordingly, the jurisdictional rules laid down in Article 4.6 of that convention cannot prevail over those of the regulation. My view is that although the BCIP is formally subsequent to regulation No 44/2001, the specialised jurisdictional rules it contains are substantively prior to those laid down by that regulation and must therefore prevail over those rules, on the grounds which follow.
2. Applicability of Article 71 of Regulation No 44/2001 with regard to the jurisdictional rules laid down by the BCIP
a) Scope of the principle of precedence of prior specialised conventions laid down in Article 71 of Regulation No 44/2001
28. Recital 25 of Regulation No 44/2001 states that the precedence granted, by Article 71 of that regulation, to specialised conventions is justified by ‘respect for international commitments entered into by the Member States’. As the Commission states, the concern expressed in that recital relates mainly to agreements concluded with third States. (36) Nevertheless, it is not disputed that the reservation contained in Article 71 also covers conventions concluded exclusively between Member States, such as the Benelux conventions.
29. In this regard, I emphasise that, unlike several other regulations also relating to judicial cooperation in civil matters, Regulation No 44/2001 does not contain any provision under which, ‘as between Member States, [it is to] take precedence over conventions concluded exclusively between two or more of them in so far as such conventions concern matters governed by [that] regulation’, (37) a form of words which ousts agreements between Member States — unlike agreements concluded with third States — even if they are both specialised and prior in relation to the regulation concerned.
30. This feature of Regulation No 44/2001 is all the more remarkable for the fact that that regulation was entirely recast in 2012 and that, despite the practical difficulties which had been encountered in assessing the scope of Article 71, (38) the EU legislature did not amend the content of that article. (39) Article 71 of Regulation No 1215/2012, which replaced Regulation No 44/2001, has undoubtedly been supplemented to a significant extent by Regulation No 542/2014, (40) but this has been done without restricting the principle under which rules of jurisdiction laid down by specialised conventions, even if concluded exclusively between Member States, make it possible to derogate from those laid down, currently, by Regulation No 1215/2012.
31. The second objective pursued by Article 71 of Regulation No 44/2001, which in my view has an important role to play in this matter, is to ensure that due consideration is given to the fact that jurisdictional rules laid down by specialised conventions have been drafted with regard to the specific features of the areas concerned, and that those rules therefore have a utility which should be preserved. (41) This relates more specifically to jurisdictional rules designed for intellectual property and appearing in international conventions, which those who drafted that regulation did not intend to override. (42)
32. In my view it follows from the foregoing that Article 71 of Regulation No 44/2001 was conceived as seeking to preserve the applicability of jurisdictional rules laid down in specialised conventions concluded by Member States before its entry into force, to the extent that the content of those rules is more specifically designed for the area concerned and, in accordance with the Court’s case-law, in so far as they conform to the principles governing judicial cooperation in civil and commercial matters within the European Union. (43) I consider that this positive approach should be followed, in particular, in relation to Article 4.6 of the BCIP, having regard to its substantive content.
b) The fact that the BCIP restates jurisdictional rules which were contained in specialised conventions pre-dating the entry into force of Regulation No 44/2001
33. Both the referring court and the Commission observe that the BCIP replaced conventions which had been in force in the three Member States which constitute Benelux, since 1971 in relation to trade marks, and since 1975 in relation to designs, without making any substantial amendments to their content. In particular, Article 4.6 of the BCIP, the only provision which is relevant in this matter, (44) restates in identical terms the jurisdictional rules which appeared in those former instruments, save for terminological changes necessitated by the fact that the new text concerns both trade marks and designs. (45)
34. The Commission maintains that it is nevertheless irrelevant, in answering the first question referred, that the provisions of the BCIP are thus analogous to those of the Benelux conventions which it replaced. In my opinion it is, on the contrary, essential to take account of the fact that in adopting that Article 4.6, the three States which are parties to the BCIP simply preserved the content of specialised provisions which were already applicable before the entry into force of Regulation No 44/2001, without amending their substantive content in any way.
35. On the basis that one of the objectives of Article 71 of Regulation No 44/2001 is to permit the application of rules designed more specifically for the particularities of the area in question, (46) it seems to me that this consideration justifies precedence being given to the jurisdictional rules reproduced in Article 4.6 of the BCIP over those laid down by that regulation. As the Commission acknowledges, the BCIP aims, amongst other things, to lay down specific rules which take account of the particularities of the Benelux trade mark, namely that it is a single trade mark which is neither divided between the Member States concerned nor attached to any particular one of those States. In my view the jurisdictional rules reproduced in Article 4.6 of the BCIP are better suited to a dispute relating to a Benelux trade mark than the jurisdictional rules laid down by Regulation No 44/2001.
36. That is true, in particular, in relation to the rule set out in Article 22(4) of that regulation, which, unlike Article 4.6 of the BCIP, was not designed for disputes such as that in the main proceedings. I will return below to the limits within which Article 22(4) could be applied to the present dispute, but will state the main reasons for this negative conclusion immediately. In this regard, I emphasise, first, that the wording of this provision does not make it possible to identify, directly, the court with jurisdiction to determine a dispute of this kind, (47) whereas Article 4.6 of the BCIP sets out a more precise series of jurisdictional criteria. (48) Secondly, the latter article — unlike Article 22(4) of Regulation No 44/2001 — prevents jurisdiction being determined solely on the basis of the place of deposit or registration of a mark, so as to avoid jurisdiction being concentrated in one of the Benelux States. (49) Finally, I note that the EU legislature itself saw fit to adopt jurisdictional rules derogating from Regulation No 44/2001 where intellectual property rights of this kind, having unitary effect in several Member States, were created at EU level. (50)
37. Furthermore, I consider that to apply the jurisdictional rules laid down in Article 4.6 of the BCIP in the present case would not in any way infringe — far from it — the essential principles on which judicial cooperation between the Member States in civil and commercial matters is based, which the Court ensures are observed in cases where rules contained in specialised international conventions are applied in this area. (51) Having regard to their specific features, in particular the fact that they designate the court which is best placed to rule on an action relating to the validity of a Benelux mark, and do so in a more precise and more balanced manner than is possible under Article 22(4) of Regulation No 44/2001, (52) the rules set out in Article 4.6 of the BCIP satisfy, in my view, those of the principles mentioned above which are relevant to jurisdictional rules. (53)
38. Furthermore, I do not share the Commission’s view that if the Court were to decide that Article 4.6 of the BCIP should take precedence over the competing provisions of Regulation No 44/2001, this would infringe the rule, set out in Article 3(2) TFEU and explained in more detail in the case-law of the Court, that Member States are no longer free to conclude conventions between themselves which ‘may affect common rules’, such as those laid down by Regulation No 44/2001, ‘or alter their scope’, as the Union has exclusive competence in this area. (54) It is true that the Court has also held, in relation to a convention concluded with third States, but without restricting itself expressly to that situation, that Article 71(1) of that regulation ‘does not enable the Member States to introduce, by concluding new specialised conventions or amending conventions already in force, rules which would prevail over those of Regulation No 44/2001’. (55)
39. Nevertheless, I consider that, since the jurisdictional rules set out in Article 4.6 of the BCIP go no further than to restate the provisions of the BCT and BDC which were in existence before the entry into force of Regulation No 44/2001, by consolidating those two instruments, it cannot be held either that the adoption of the BCIP may have affected the provisions of that regulation or altered their scope, or that the BCIP constitutes a ‘new specialised convention’ or a convention ‘amending conventions already in force’, within the meaning of the case-law referred to above.
40. In this specific context in which two Benelux conventions pre-dating Regulation No 44/2001 were simply recast in another Benelux convention signed and ratified after that regulation, the principle of precedence of specialised conventions which is set out in Article 71 of that regulation must, in my opinion, prevail over considerations tending to attach more importance to form than to substance. The position defended by the Commission would have the questionable result of preventing Member States from making changes relating simply to drafting or purely to form, which should in my view be distinguished from the substantive amendments which are prohibited by the case-law referred to above.
41. The interpretation of Article 71 of Regulation No 44/2001 which I advocate, a non-formalist interpretation, is supported in my view by more general considerations based on primary EU law. It is apparent from Article 350 TFEU (56) that specific regional agreements concluded in relation to Benelux are to be preserved in so far as they enable the objectives of Benelux to be attained better than would EU law, and in so far as they are necessary to ensure the proper functioning of the Benelux system. (57) I am of the opinion that in the circumstances, it was appropriate, even indispensable, for the three Benelux States to retain, in Article 4.6 of the BCIP, specialised jurisdictional rules which they had previously adopted in order to ensure that the uniform trade mark system which existed between them operated in a harmonised and balanced manner. (58) This opinion is based on the fact that that system, which entirely replaced the legislation of those States in this area, (59) does not so far have any equivalent in EU law (60) and also on the fact that the application of Regulation No 44/2001 would not produce as satisfactory a result as that of Article 4.6, in this specific context.
42. Therefore, in my opinion the BCIP should be classified as a convention relating to particular matters to which Member States are parties, within the meaning of Article 71 of Regulation No 44/2001 and, accordingly, the jurisdictional rules appearing in Article 4.6 of that convention must prevail over those set out in that regulation in cases within the scope of both. I therefore suggest that the answer to the first question referred should be that Article 71 must be interpreted as meaning that where a cross-border dispute falls within the scope of both Regulation No 44/2001 and the BCIP, a Member State may, in accordance with Article 71(1), apply the jurisdictional rules laid down in Article 4.6 of the BCIP.
B – The interpretation of Article 22(4) of Regulation No 44/2001
1. The subject-matter of the second and third questions referred
43. The referring court submits the second and third questions on a purely subsidiary basis, solely in the event that, in answering the first question referred, the Court holds that the provisions of Regulation No 44/2001 must prevail over the jurisdictional rules appearing in Article 4.6 of the BCIP. I consider that they should not. If the Court approves my proposed interpretation of Article 71 of that regulation, it will be unnecessary to answer these two questions. Nevertheless, for the sake of completeness I make the following observations in this regard.
44. First, I note that, having regard to the interconnection between these questions, both of which, in my view, relate to the meaning and scope to be given to Article 22(4) of Regulation No 44/2001 in the context of a dispute such as that in the main proceedings, it is appropriate to consider them together, if it is necessary to answer them.
45. In the view of the referring court, if the jurisdictional rule set out in Article 22(4) is to apply in a dispute which, like that in the main proceedings, relates to the possible invalidity of a Benelux trade mark, there is doubt concerning the meaning to be given, in this particular context, to the expression ‘the courts of the Member State in which the deposit or registration has been applied for’, which is the criterion relevant to the allocation of jurisdiction, under that provision, in relation to the validity of trade marks.
46. To justify its second question, the referring court states, essentially, that an application to register a Benelux trade mark is uniformly valid for the entirety of Benelux territory, such that the courts of each of the Benelux Member States — in other words the Belgian, Luxembourg and Dutch courts — could have joint jurisdiction having regard to the wording of Article 22(4).
47. In the event that that interpretation is rejected by the Court, the referring court asks it, by its third question, to clarify, first, which of the three Member States has sole international jurisdiction in this area and, secondly, whether the criteria of territorial jurisdiction laid down in Article 4.6 BCIP could be used at this stage in order to identify the State in question.
48. In its observations, the Commission suggests, rightly in my view, that the second question should be answered as follows: ‘Article 22(4) of Regulation [No 44/2001] must be interpreted as meaning that, in a dispute relating to the registration or the validity of a Benelux trade mark, the Belgian courts, the Dutch courts and the Luxembourg [courts] have international jurisdiction to take cognisance of the dispute’. The Commission does not state any view as to the third question. For my part, I would make some remarks in that regard.
2. The courts having jurisdiction to rule on a dispute relating to the validity of a Benelux trade mark in the event that Article 22(4) of Regulation No 44/2001 is applied
a) The content of the jurisdictional rule set out in Article 22(4) of Regulation No 44/2001
49. I note that, as indicated by the opening words of Article 22 of Regulation No 44/2001, all of the jurisdictional rules set out in Article 22(1) to Article 22(5) have the common feature that they apply regardless of where the parties are domiciled (61) and confer a jurisdiction of an exclusive and mandatory nature, the application of which is specifically binding on both litigants and courts. (62) Since they thus derogate not only from the general rule laid down in Article 2 of that regulation which tends to favour defendants, but also from the possibilities of consensual prorogation of jurisdiction which are, in principle, open to the parties, (63) these specialised provisions must be interpreted strictly. (64)
50. Contrary to what is stated in the Commission’s written observations, (65) Article 22(4) of Regulation No 44/2001, which refers collectively to ‘the courts of [a] Member State’, merely designates the Member State whose courts have jurisdiction ratione materiae under that provision, and does not allocate jurisdiction within the Member State concerned, as the Court has already held. (66)
51. The first subparagraph of Article 22(4) provides that where a cross-border dispute relates to the registration or validity of an intellectual property right required to be deposited or registered, such as a trade mark, international jurisdiction is conferred exclusively on 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’. The second subparagraph of Article 22(4) adds that, in the specific area of European patents governed by the Munich convention, ‘the courts of each Member State shall have exclusive jurisdiction … in proceedings concerned with the registration or validity of any European patent granted for that State’. (67)
52. An exclusive allocation of jurisdiction of the kind provided for by those two paragraphs, in favour of the Member State directly concerned by the issue of the right in question, has good reason to be precise. It reflects the legislature’s desire to conform to the objectives of a close link between the court and the action, and facilitation of the sound administration of justice, which are referred to, as justifications for departing from the principle that the courts of the place where the defendant is domiciled have jurisdiction, in recital 12 in the preamble to Regulation No 44/2001.
53. The courts of the State where the intellectual property right is to produce its legal effects are considered to be ‘best placed’ (68) to adjudicate on the registration or validity of that right with the regard to the applicable law, which is generally the legislation of the same State in which protection of the right is claimed. (69) As the Commission emphasises, there has traditionally been a strong link between the protection of intellectual property rights and national sovereignty. (70) In this regard, the Court has also pointed out that the grant of rights such as patents necessitates the intervention of national administrative authorities and that disputes relating to them have been reserved to specialised courts in a number of Member States. (71)
54. It is in the light of the matters thus established both by legislation and by case-law, and taking account of the notable particularities of the intellectual property right at issue in the main proceedings, that the question of how (if at all) Article 22(4) of Regulation No 44/2001 should be applied in this matter should be considered.
b) The application, if any, of Article 22(4) of Regulation No 44/2001 in the present case
55. I state at the outset that if the Court were to hold — contrary to my proposed answer to the first question referred — that Regulation No 44/2001 must apply in a dispute such as that in the main proceedings, it seems to me to be clear, having regard to its wording, that it is indeed the jurisdictional rule set out in Article 22(4), and not those appearing in other provisions of that regulation, (72) which must determine which court has jurisdiction to rule on the ‘validity’ of the Benelux trade mark concerned.
56. The decisive factor in the allocation of jurisdiction in respect of the disputes to which Article 22(4) applies is the close link which must exist between the intellectual right at issue and the territory in which that right can have the benefit of protection. (73) In the particular case of the unitary right that is the Benelux trade mark, which is valid in the three Benelux States and has the benefit of uniform protection in those States, (74) I consider that the territory referred to by the words ‘the Member State in which …’ in the first paragraph of Article 22(4) of Regulation No 44/2001 must be understood in the circumstances to be the entire territory of Benelux, (75) which can be treated like the territory of a Member State, as the Court has already held in similar contexts. (76) I consider therefore that, in relation specifically to the Benelux trade mark, the territories of those three States are designated collectively and the courts of each one potentially have jurisdiction, on the basis that they can all be regarded as being ‘best placed’ to apply the uniform system adopted by those States in relation to that trade mark.
57. I point out that the rule allocating jurisdiction nationally, which is expressly laid down in relation to the European patent in the second subparagraph of Article 22(4), cannot be applied to the Benelux trade mark, since the systems in question are fundamentally distinct. (77) The European patent differs from the Benelux trade mark in that it is not a unitary right but amounts to a bundle of separate national patents. (78) As the Commission states, ‘essentially, in legal terms it remains a matter of distinct patents which continue to relate, individually, to the national territory concerned’. This justifies the fact that jurisdiction is still allocated to each State within the territory in which the protection of a European patent is claimed, as is the case for strictly national intellectual property rights.
58. It is precisely because the jurisdictional rules introduced by the Brussels Convention and restated in Regulation No 44/2001 are not entirely suited to the particularities of unitary intellectual property rights that specific jurisdictional rules have been adopted for the rights of that kind which have been created at European Community and subsequently EU level. Such was the case in relation to ‘Community designs’, (79) the ‘Community trade mark’ which has recently become the ‘European Union trade mark’, (80) and the ‘European patent with unitary effect’. (81)
59. In its written observations, the Commission asserts that these ‘derogating regimes do not have the effect, however, that the courts having jurisdiction may be those of a Member State in which the intellectual property right is not valid’. (82) For my part, I would emphasise that the provisions in question, particularly those relating to the validity of a European Union trade mark, lead to a total exclusion of the rule set out in Article 22(4) of that regulation, in that they provide for a centralised office to have jurisdiction to determine free-standing invalidity applications, and for specialised courts to have jurisdiction to determine invalidity claims brought by way of counterclaim — particularly in infringement proceedings — those courts being, in principle, courts of the Member State where the defendant is domiciled. (83)
60. In line with the Commission’s observations, I concede that, because it would lead to the courts of three EU Member States being in an equal position to have jurisdiction to entertain invalidity proceedings relating to a Benelux trade mark, the strict interpretation of Article 22(4) which is proposed here would lead to a result which is ‘not optimal’ in the light of the objectives of Regulation No 44/2001. (84) Nevertheless, in the event that that regulation is considered to be applicable to such proceedings, that interpretation will in by view be unavoidable, having regard to both the wording and the basis of Article 22(4), and by reason of the particular characteristics of the intellectual property right with which we are concerned. (85)
61. In any event, I consider that this unfavourable observation should be nuanced, as it is probable that in practice, it would often be the Rechtbank Den Haag (District Court, The Hague) before which — as in the main proceedings — the action was brought, by reference to the place where the Benelux trade mark in question had been deposited or registered. (86) It seems to me that the fact that the claimant could choose to bring the matter before any of the three States could undoubtedly oblige the defendant to plead in a language of which he did not have a perfect command and could lead to a risk of forum shopping. Nevertheless, the practical consequences of the claimant having that choice are less severe in the particular context of the Benelux trade mark than they would generally be, because the legal regime applicable to such trade marks has been fully harmonised by those Member States and is interpreted in a uniform manner. (87)
c) The impossibility of having supplementary reference to Article 4.6 of the BCIP
62. To avoid the difficulties that would arise if Article 22(4) of Regulation No 44/2001 were applied to a dispute concerning an intellectual property right with unitary effect such as the Benelux trade mark, (88) the referring court envisages the possibility of having reference, apparently on a supplementary basis, to the series of rules of ‘territorial jurisdiction’ appearing in Article 4.6 of the BCIP, in order to determine exactly which of the three Benelux States has jurisdiction in the area. (89)
63. As a preliminary remark, I note that Article 4.6 of the BCIP sets out jurisdictional rules in a cascading form, (90) those rules being fundamentally different in content from the rule of exclusive jurisdiction appearing in Article 22(4) of Regulation No 44/2001. I add that it is settled case-law that the provisions of Regulation No 44/2001, such as Article 22(4), must be interpreted in an independent manner, and not by reference to the law of Member States. (91)
64. Moreover, I do not consider that there can be any reference, even a merely supplementary reference, to this provision of the BCIP in the event of the Court holding that the BCIP is excluded by Regulation No 44/2001, by virtue of Article 71 of that regulation. Only the provisions of Regulation No 44/2001 would then be applicable in order to determine the conflicts of jurisdiction or indeed the procedural conflicts which could be generated by a dispute such as that in the main proceedings.
65. The fact that, as I see it, the claimant would be able to bring proceedings indiscriminately before the courts of any of the Benelux States, in the event that Article 22(4) of Regulation No 44/2001 must be applied to such a dispute, gives rise to difficulties, but these are not insurmountable, as the regulation itself provides solutions to them. Thus, in the event of concurrent proceedings, international jurisdiction would be allocated among those three States in accordance with the rule giving priority to ‘the court first seised’, as set out in Articles 27 to 30 of that regulation, which govern situations of lis pendens and related actions capable of arising between the courts of Member States, (92) this being done in the light of the Court’s case-law on those articles. (93)
66. Accordingly, in the event that the Court considers it necessary to rule on the second and third questions referred, it would be appropriate in my view to hold that Article 22(4) of Regulation No 44/2001 must be interpreted as meaning that jurisdiction to entertain a cross-border dispute relating to the registration or validity of a Benelux trade mark lies with the courts of each of the three Member States in which that intellectual property right produces its effects and is required to be given uniform protection, namely the Kingdom of Belgium, the Grand Duchy of Luxembourg and the Kingdom of the Netherlands.
V – Conclusion
67. In the light of the foregoing considerations, I suggest that the Court should answer the questions referred by the Rechtbank Den Haag (District Court, The Hague, Netherlands) as follows:
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 must be interpreted as meaning that, in a situation where a cross-border dispute falls within the scope of both that regulation and the Benelux Convention on Intellectual Property (Trademarks and Designs), signed at The Hague on 25 February 2005, a Member State may, in accordance with Article 71(1) of that regulation, apply the jurisdictional rules laid down in Article 4(6) of that convention.