Judgment of the Court (Second Chamber) of 19 October 2017 (request for a preliminary ruling from the Landgericht Hamburg — Germany) — Merck KGaA v Merck & Co. Inc., Merck Sharp & Dohme Corp., MSD Sharp & Dohme GmbH
(Case C-231/16) 1
(Reference for a preliminary ruling — Regulation (EC) No 207/2009 — EU trade mark — Article 109(1) — Civil actions on the basis of EU trade marks and national trade marks — Lis pendens — Meaning of ‘same cause of action’ — Use of the name ‘Merck’ on the internet in domain names and on social media platforms — One action based on a national trade mark followed by another based on an EU trade mark — Disclaimer of jurisdiction — Scope)
Language of the case: German
Referring court
Landgericht Hamburg
Parties to the main proceedings
Applicant: Merck KGaA
Defendants: Merck & Co. Inc., Merck Sharp & Dohme Corp., MSD Sharp & Dohme GmbH
Operative part of the judgment
1. Article 109(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark must be interpreted as meaning that the condition laid down in that provision as to the existence of the ‘same cause of action’ is satisfied where actions for infringement between the same parties, on the basis of a national trade mark and an EU trade mark respectively, are brought before the courts of different Member States, only in so far as those actions relate to an alleged infringement of a national trade mark and an identical EU trade mark in the territory of the same Member States;
2. Article 109(1)(a) of Regulation No 207/2009 must be interpreted as meaning that, where actions for infringement, the first on the basis of a national trade mark concerning an alleged infringement within the territory of a Member State and the second on the basis of an EU trade mark concerning an alleged infringement in the entire territory of the European Union, are brought before the courts of different Member States between the same parties, the court other than the court first seised must decline jurisdiction in respect of the part of the dispute relating to the territory of the Member State referred to in the action for infringement brought before the court first seised;
3. Article 109(1)(a) of Regulation No 207/2009 must be interpreted as meaning that the condition laid down in that provision as to the existence of the ‘same cause of action’ is no longer satisfied where, following a partial withdrawal by an applicant, provided that it was properly declared, of an action for infringement on the basis of an EU trade mark seeking initially to prohibit the use of that trade mark in the territory of the European Union, such a withdrawal concerning the Member State referred to in the action brought before the court first seised, on the basis of a national trade mark seeking to prohibit the use of that trade mark within the territory of that Member State, the actions in question no longer relate to an alleged infringement of a national trade mark and an identical EU trade mark in the territory of the same Member States;
4. Article 109(1)(a) of Regulation No 207/2009 must be interpreted as meaning that, where the trade marks are identical, the court other than the court first seised must decline jurisdiction in favour of the court first seised only in so far as those trade marks are valid for identical goods or service.
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1 OJ C 279, 1.8.2016.