(Reference for a preliminary ruling\u00a0\u2014 Regulation (EC) No\u00a0207\/2009\u00a0\u2014 EU trade mark\u00a0\u2014 Article\u00a0109(1)\u00a0\u2014 Civil actions on the basis of EU trade marks and national trade marks\u00a0\u2014 Lis pendens\u00a0\u2014 Meaning of \u2018same cause of action\u2019\u00a0\u2014 Use of the name \u2018…..\u2019 on the internet in domain names and on social media platforms\u00a0\u2014 One action based on a national trade mark followed by another based on an EU trade mark\u00a0\u2014 Disclaimer of jurisdiction\u00a0\u2014 Scope)<\/p>\n
In Case C\u00a0231\/16,<\/p>\n
REQUEST for a preliminary ruling under Article\u00a0267 TFEU from the Landgericht Hamburg (Regional Court, Hamburg, Germany), made by decision of 14\u00a0April 2016, received at the Court on 25\u00a0April 2016, in the proceedings<\/p>\n
omitted<\/p>\n
v<\/p>\n
<\/p>\n
<\/p>\n
omitted<\/p>\n
<\/p>\n
<\/p>\n
THE COURT (Second Chamber),<\/p>\n
having regard to the written procedure and further to the hearing on 15\u00a0February 2017,<\/p>\n
after considering the observations submitted on behalf of:<\/p>\n
omitted<\/p>\n
\u2013\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0the European Commission, acting as Agents,<\/p>\n
after hearing the Opinion of the Advocate General at the sitting on 3\u00a0May 2017,<\/p>\n
gives the following<\/p>\n
Judgment<\/p>\n
1\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0This request for a preliminary ruling concerns the interpretation of Article\u00a0109(1) of Council Regulation (EC) No\u00a0207\/2009 of 26\u00a0February 2009 on the European Union trade mark (OJ 2009 L\u00a078, p.\u00a01).<\/p>\n
2\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0The request been made in proceedings between…. and….., \u2026…. and \u2026…., concerning the former\u2019s applications for an injunction prohibiting the latter companies from using the name ‘……\u2019 on the internet in domain names and social media platforms, as well as in business names, both in Germany and elsewhere in the European Union.<\/p>\n
Legal context<\/p>\n
Regulation (EC) No\u00a044\/2001<\/p>\n
3\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Council Regulation (EC) No\u00a044\/2001 of 22\u00a0December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (OJ 2001 L\u00a012, p.\u00a01) replaced, in relations between the Member States, the Convention of 27\u00a0September 1968 on jurisdiction and the enforcement of judgments in civil and commercial matters (OJ 1978 L\u00a0304, p.\u00a036),<\/p>\n
4\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Recital 15 of Regulation No\u00a044\/2001 stated:<\/p>\n
\u2018In the interests of the harmonious administration of justice it is necessary to minimise the possibility of concurrent proceedings and to ensure that irreconcilable judgments will not be given in two Member States. There must be a clear and effective mechanism for resolving cases of\u00a0lis pendens\u00a0\u2026 \u2019<\/p>\n
5\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Article\u00a027 of that regulation, which was in Section 9 of Chapter II, entitled \u2018Lis pendens\u00a0\u2014 related actions\u2019, provided:<\/p>\n
\u20181.\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Where proceedings involving the same cause of action and between the same parties are brought in the courts of different Member States, any court other than the court first seised shall of its own motion stay its proceedings until such time as the jurisdiction of the court first seised is established.<\/p>\n
2.\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Where the jurisdiction of the court first seised is established, any court other than the court first seised shall decline jurisdiction in favour of that court.\u2019<\/p>\n
Regulation No\u00a0207\/2009<\/p>\n
6\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Recitals 3 and 15 to 17 Regulation No\u00a0207\/2009 state:<\/p>\n
\u2018(3)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0For the purpose of pursuing the [European Union\u2019s] \u2026 objectives it would appear necessary to provide for \u2026 arrangements for [EU] trade marks whereby undertakings can by means of one procedural system obtain [EU] trade marks to which uniform protection is given and which produce their effects throughout the entire area of the [European Union]. The principle of the unitary character of the [EU] trade mark thus stated should apply unless otherwise provided for in this Regulation.<\/p>\n
\u2026<\/p>\n
(15)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0In order to strengthen the protection of [EU] trade marks the Member States should designate, having regard to their own national system, as limited a number as possible of national courts of first and second instance having jurisdiction in matters of infringement and validity of [EU] trade marks.<\/p>\n
(16)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Decisions regarding the validity and infringement of [EU] trade marks must have effect and cover the entire area of the [European Union], as this is the only way of preventing inconsistent decisions on the part of the courts and the [European Union Intellectual Property Office (EUIPO)] and of ensuring that the unitary character of [EU] trade marks is not undermined. The provisions of [Regulation No\u00a044\/2001] should apply to all actions at law relating to [EU] trade marks, save where this Regulation derogates from those rules.<\/p>\n
(17)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Contradictory judgments should be avoided in actions which involve the same acts and the same parties and which are brought on the basis of [an EU] trade mark and parallel national trade marks. For this purpose, when the actions are brought in the same Member State, the way in which this is to be achieved is a matter for national procedural rules, which are not prejudiced by this Regulation, whilst when the actions are brought in different Member States, provisions modelled on the rules on\u00a0lis pendens\u00a0and related actions of [Regulation No\u00a044\/2001] appear appropriate.\u2019<\/p>\n
7\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Article\u00a01(2) of Regulation No\u00a0207\/2009 states:<\/p>\n
\u2018An EU trade mark shall have a unitary character. It shall have equal effect throughout the [European Union]: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its use be prohibited, save in respect of the whole [European Union]. This principle shall apply unless otherwise provided in this Regulation.\u2019<\/p>\n
8\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Article\u00a0109 of that regulation, entitled \u2018Simultaneous and successive civil actions on the basis of [EU] trade marks and national trade marks\u2019, in Section 1 of Title XI of that regulation, which is entitled \u2018Civil actions on the basis of more than one trade mark\u2019, states, in paragraph\u00a01(a):<\/p>\n
\u2018Where 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:<\/p>\n
(a)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0the 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\u2019.<\/p>\n
The dispute in the main proceedings and the questions referred for a preliminary ruling<\/p>\n
9\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0The applicant in the main proceedings,…., is a chemical and pharmaceutical undertaking which, according to the order for reference, employs approximately 40\u00a0000 employees and operates in 67 countries worldwide.<\/p>\n
10\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0The first defendant in the main proceedings, \u2026…, is the publicly listed parent company of the second defendant in the main proceedings, \u2026…., which primarily sells medicines and vaccines, as well as cosmetic and healthcare products. According to the order for reference, \u2026….. is responsible for the operational activities of the group and, in particular, its internet visibility, particularly through the publication of information of interest to its shareholders. The third defendant in the main proceedings, \u2026…., is a German subsidiary of \u2026….<\/p>\n
11\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0The applicant and the defendants in the main proceedings were initially part of the same group of companies. However, they have been completely separate since 1919.<\/p>\n
12\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0It is clear from the order for reference that …. is the proprietor of the national trade mark…., registered in the United Kingdom. It is also the proprietor of the EU word mark….for goods in Classes 5, 9 and 16 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15\u00a0June 1957, as revised and amended, and for services in Class 42 of that agreement.<\/p>\n
13\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Several agreements were entered into successively between the company which was ….. predecessor in title and the company which was \u2026… predecessor in title. Those agreements, the most recent of which is still in force, laid down rules governing the use of \u2026.. trade marks by \u2026. in Germany and in other states.<\/p>\n
14\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0From the website of the defendants in the main proceedings, www……, any user in Germany or in another Member State is led, in particular by way of links, to secondary websites which also include content reflecting the internet presence of the defendants in the main proceedings, such as www…….., www…….. or www…… On those websites, the dissemination of information is not geographically targeted, with the result that all of the content is accessible in the same form worldwide.<\/p>\n
15\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Alongside their internet domain names, \u2026… and…… have established other forms of online visibility on several social media platforms.<\/p>\n
16\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0On 8\u00a0March 2013, the applicant in the main proceeding brought an action before the High Court of Justice of England and Wales, Chancery Division (United Kingdom) against, in particular,….. and….., for an alleged infringement of its national trade mark due to the use of the name \u2018….\u2019 in the United Kingdom.<\/p>\n
17\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0On 11\u00a0March 2013, the applicant in the main proceedings also brought an action before the Landgericht Hamburg (Regional Court, Hamburg, Germany) against the same defendants, but also against \u2026…, on the basis of the EU trade mark of which it is the proprietor.<\/p>\n
18\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0As is apparent from the order for reference, the applicant in the main proceedings takes the view that the fact that the websites of the defendants in the main proceedings, screenshots of which it submitted, are accessible in the European Union, and therefore also in Germany, without geographical targeting of the dissemination, infringes its trade mark rights.<\/p>\n
19\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0By pleadings of 11\u00a0November 2014, 12\u00a0March 2015, 10\u00a0September 2015 and 22\u00a0December 2015, the applicant in the main proceedings amended its heads of claim before the referring court and stated that it was withdrawing its action in so far as the applications related to the territory of the United Kingdom. That withdrawal was opposed by the defendants in the main proceedings<\/p>\n
20\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0The defendants in the main proceedings take the view that the action pending before the referring court is inadmissible in the light of Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009, at least in so far as it relates to the plea in law alleging infringement of the EU trade mark owned by the applicant in the main proceedings in the entire European Union. The partial withdrawal declared by the applicant in the main proceedings is said to be irrelevant in that regard.<\/p>\n
21\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0The Landgericht Hamburg (Regional Court, Hamburg) notes that Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 appears to exclude any limitation of the territorial scope of a possible declining of jurisdiction on the part of the court other than the court first seised, in circumstances such as those at issue in the main proceedings. However, the referring court has doubts in that regard.<\/p>\n
22\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0In 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:<\/p>\n
\u2018(1)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Must the term \u201csame cause of action\u201d in Article\u00a0109(1)(a) of [Regulation No\u00a0207\/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?<\/p>\n
(2)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Must the term \u201csame cause of action\u201d in Article\u00a0109(1)(a) of Regulation No\u00a0207\/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 \u201cfacebook.com\u201d and\/or \u201cyoutube.com\u201d and\/or \u201ctwitter.com\u201d, in each case\u00a0\u2014 as regards the relevant domain names \u201cfacebook.com\u201d and\/or \u201cyoutube.com\u201d and\/or \u201ctwitter.com\u201d\u00a0\u2014 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?<\/p>\n
(3)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Must Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 be interpreted as meaning that when a \u201ccourt other than the court first seised\u201d of a Member State is seised of an \u201caction for infringement\u201d 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\u00a097(2) and Article\u00a098(1)(a) of Regulation No\u00a0207\/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\u00a0109(1)(a) of Regulation No\u00a0207\/2009 only for the territory of the other Member State in which a court had been \u201cfirst\u201d 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 \u201ccourt other than the court first seised\u201d) 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 \u201ccourt other than the court first seised\u201d, 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\u00a097(2) and Article\u00a098(1)(a) of Regulation No\u00a0207\/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?<\/p>\n
(4)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Must Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 be interpreted as meaning that when a \u201ccourt other than the court first seised\u201d of a Member State is seised of an \u201caction for infringement\u201d 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 \u201cfacebook.com\u201d and\/or \u201cyoutube.com\u201d and\/or \u201ctwitter.com\u201d, each\u00a0\u2014 as regards the relevant domain names of \u201cfacebook.com\u201d and\/or \u201cyoutube.com\u201d and\/or \u201ctwitter.com\u201d\u00a0\u2014 under the same username, and claims have been put forward to it under Article\u00a097(2) and Article\u00a098(1)(a) of Regulation No\u00a0207\/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\u00a0109(1)(a) of Regulation No\u00a0207\/2009 only for the territory of the other Member State in which a court was \u201cfirst\u201d 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 \u201ccourt other than the court first seised\u201d) through the maintenance and use of the same worldwide, and therefore also EU-wide, identical online content on the internet domain names \u201cfacebook.com\u201d and\/or \u201cyoutube.com\u201d and\/or \u201ctwitter.com\u201d, each\u00a0\u2014 as regards the relevant domain names \u201cfacebook.com\u201d and\/or \u201cyoutube.com\u201d and\/or \u201ctwitter.com\u201d\u00a0\u2014 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 \u201ccourt other than the court first seised\u201d, 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\u00a097(2) and Article\u00a098(1)(a) of Regulation No\u00a0207\/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?<\/p>\n
(5)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Must Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 be interpreted as meaning that the withdrawal of an action \u2013\u2013 brought before the \u201ccourt other than the court first seised\u201d 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\u00a097(2) and Article\u00a098(1)(a) of Regulation No\u00a0207\/2009 in relation to acts of infringement committed or threatened within the territory of any of the Member States \u2013\u2013 in relation to the territory of the other Member State in which a court was \u201cfirst seised\u201d 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 \u201ccourt other than the court first seised\u201d) 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 \u201ccourt other than the court first seised\u201d under Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 to the extent that the marks themselves and the goods and services covered by the marks are identical?<\/p>\n
(6)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Must Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 be interpreted as meaning that the withdrawal of an action \u2013\u2013 brought before a \u201ccourt other than the court first seised\u201d 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 \u201cfacebook.com\u201d and\/or \u201cyoutube.com\u201d and\/or \u201ctwitter.com\u201d, each\u00a0\u2014 as regards the relevant domain names \u201cfacebook.com\u201d and\/or \u201cyoutube.com\u201d and\/or \u201ctwitter.com\u201d\u00a0\u2014 under the same username, with which claims had initially been made under Article\u00a097(2) and Article\u00a098(1)(a) of Regulation No\u00a0207\/2009 in relation to acts of infringement committed or threatened within the territory of any of the Member States \u2013\u2013 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 \u201ccourt other than the court first seised\u201d) through the maintenance and use of the same worldwide, and therefore also EU-wide, identical online content on the internet domain names \u201cfacebook.com\u201d and\/or \u201cyoutube.com\u201d and\/or \u201ctwitter.com\u201d, each\u00a0\u2014 as regards the relevant domain names of \u201cfacebook.com\u201d and\/or \u201cyoutube.com\u201d and\/or \u201ctwitter.com\u201d\u00a0\u2014 under the same username, precludes a declining of jurisdiction by the \u201ccourt other than the court first seised\u201d under Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 to the extent that the marks themselves and the goods and services covered by the marks are identical?<\/p>\n
(7)\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Must Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 be interpreted as meaning that it follows from the wording \u201cwhere the trade marks concerned are identical and valid for identical goods or services\u201d that, in a situation where the marks are identical, the \u201ccourt other than the court first seised\u201d is without jurisdiction only\u00a0in so far as\u00a0the EU trade mark and the earlier national trade mark are registered for the same goods and\/or services, or is the \u201ccourt other than the court first seised\u201d\u00a0entirely\u00a0without 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?\u2019<\/p>\n
Consideration of the questions referred<\/p>\n
The first and second questions<\/p>\n
23\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0By its first and second questions, which it is appropriate to examine together, the referring court asks, in essence, whether Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 must be interpreted as meaning that the condition laid down in that provision as to the existence of the \u2018same cause of action\u2019 is satisfied where actions for infringement between the same parties, 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.<\/p>\n
24\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Under Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009, 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, the court other than the court first seised is required, of its own motion, to decline jurisdiction in favour of that court where the trade marks concerned are identical and valid for identical goods or services.<\/p>\n
25\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0The wording of Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 does not define what is to be understood by the phrase \u2018same cause of action\u2019 in that provision.<\/p>\n
26\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0It must be recalled that, according to the Court\u2019s settled case-law, it follows from the need for a uniform application of EU law and from the principle of equality that the wording of a provision of EU law which, as in the present case, makes no express reference to the law of the Member States for the purpose of determining its meaning and scope must normally be given an autonomous and uniform interpretation throughout the European Union, having regard not only to its wording but also to the context of the provision and the objective pursued by the rules of which it forms part (see, inter alia, judgments of 26\u00a0May 2016,\u00a0Envirotec Denmark, C\u00a0550\/14, EU:C:2016:354, paragraph\u00a027, and of 18\u00a0May 2017,\u00a0Hummel Holding, C\u00a0617\/15, EU:C:2017:390, paragraph\u00a022 and the case-law cited).<\/p>\n
27\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0At the outset, it should be pointed out that the scope of Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 cannot be determined on the basis of an exclusively textual interpretation due to the differences between the various language versions of that provision (see, to that effect, judgment of 15\u00a0March 2017,\u00a0Al Chodor, C\u00a0528\/15, EU:C:2017:213, paragraph\u00a032 and the case-law cited).<\/p>\n
28\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0While certain language versions, such as the Spanish, French and Slovenian language versions make reference to actions for infringement brought involving \u2018the same acts\u2019, other language versions, such as the English and Lithuanian language versions, refer to actions involving the \u2018same cause of action\u2019 or, even, such as the Danish language version, to actions with the same \u2018subject matter\u2019 and \u2018legal basis\u2019.<\/p>\n
29\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0As regards the context of the provision at issue, it should be noted, first, that, as is clear from recital 17 of Regulation No\u00a0207\/2009, Article\u00a0109 of that regulation is modelled on the rules on\u00a0lis pendens\u00a0contained in Regulation No\u00a044\/2001, Article\u00a027(1) of which states that, where proceedings involving the same cause of action and between the same parties are brought in the courts of different Member States, any court other than the court first seised is required, of its own motion, to stay its proceedings until such time as the jurisdiction of the court first seised is established, and Article\u00a027(2) of which states that, where the jurisdiction of the court first seised is established, the court other than the court seised is required to decline jurisdiction in favour of that court.<\/p>\n
30\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Second, it should be pointed out that the procedural rules laid down by Regulation No 207\/2009 are\u00a0lex specialis\u00a0in relation to the procedural rules contained in Regulation No\u00a044\/2001. Thus, pursuant to Article\u00a094(1) of Regulation No\u00a0207\/2009, the provisions of Regulation No\u00a044\/2001 are, in so far as Regulation No\u00a0207\/2009 does not provide otherwise, applicable to proceedings relating to EU trade marks and to proceedings relating to simultaneous and successive actions on the basis of EU trade marks and national trade marks, which suggests a coherent interpretation of the concepts contained in those instruments.<\/p>\n
31\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0As regards the objective of Article\u00a0109(1) of Regulation No\u00a0207\/2009, it should be noted that, according to recital 17 of the regulation, it is intended to avoid contradictory judgments in actions which involve the same acts and the same parties and which are brought on the basis of an EU trade mark and parallel national trade marks.<\/p>\n
32\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0That objective corresponds to one of the objectives of Regulation No 44\/2001, which is, in particular, according to recital 15 of that regulation, to minimise the possibility of concurrent proceedings and to ensure that irreconcilable judgments will not be given in different Member States.<\/p>\n
33\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0It must therefore be found that the condition relating to the existence of the \u2018same cause of action\u2019 within the meaning of Article\u00a0109(1) of Regulation No\u00a0207\/2009 must be given the same interpretation as that given by the Court to the condition relating to the existence of proceedings involving the \u2018same cause of action\u2019 within the meaning of Article\u00a027(1) of Regulation No\u00a044\/2001.<\/p>\n
34\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Furthermore, it must be observed, in that regard, that the English language versions of those provisions use the same wording as regards the condition relating to the identical nature of the subject matter of the proceedings.<\/p>\n
35\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0It follows from the foregoing considerations that, in order to establish whether, in the context of the application of Article\u00a0109(1) of Regulation No\u00a0207\/2009, the condition relating to the existence of the \u2018same cause of action\u2019 is satisfied, it is necessary, as the Advocate General indicated in points\u00a049 and 50 of his Opinion, to establish whether the actions for infringement under Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 have the same cause of action.<\/p>\n
36\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0According to the case-law on Article\u00a021 of the Convention of 27\u00a0September 1968 on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters, the Court\u2019s interpretation of which is equally valid for Article\u00a027 of Regulation No\u00a044\/2001, the \u2018cause of action\u2019 comprises the facts and the rule of law relied on as the basis of the action (see, by analogy, judgments of 6\u00a0December 1994,\u00a0Tatry, C\u00a0406\/92, EU:C:1994:400, paragraph\u00a039, and of 22\u00a0October 2015,\u00a0Aannemingsbedrijf Aertssen and Aertssen Terrassements, C\u00a0523\/14, EU:C:2015:722, paragraph\u00a043).<\/p>\n
37\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0In the present case, first, it is necessary to find, as did the Advocate General in point\u00a051 of his Opinion, that successive civil actions on the basis of EU trade marks and national trade marks must be considered, for the purposes of the application of Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009, as having the same basis, given that they are based on exclusive rights arising from identical trade marks. If the action brought before the court first seised is based on a national trade mark, while the action brought before the court other than the court first seised is based on an EU trade mark, such a circumstance is inherent in the rule of\u00a0lis pendens\u00a0laid down in Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009.<\/p>\n
38\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Second, as regards the cause of action, it is clear from the order for reference that the actions initiated before the High Court of Justice of England and Wales, Chancery Division and the Landgericht Hamburg (Regional Court, Hamburg) respectively concern the use of the term \u2018….\u2019 on the internet in domain names and on social media platforms which are accessible worldwide. Therefore, it is apparent that, subject to verification by the referring court, the condition relating to the identical nature of the facts, like that relating to the identical nature of the cause of action, is satisfied in the present case.<\/p>\n
39\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0As regards the \u2018subject matter\u2019, the Court has stated that this means the end the action has in view (see, by analogy, judgments of 6\u00a0December 1994,\u00a0Tatry, C\u00a0406\/92, EU:C:1994:400, paragraph\u00a041, and of 8\u00a0May 2003,\u00a0Gantner Electronic, C\u00a0111\/01, EU:C:2003:257, paragraph\u00a025); the concept of \u2018subject matter\u2019 cannot be restricted so as to mean two claims which are formally identical (see, by analogy, judgment of 8\u00a0December 1987,\u00a0Gubisch Maschinenfabrik, 144\/86, EU:C:1987:528, paragraph\u00a017).<\/p>\n
40\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Account must be taken in that regard of the applicants\u2019 respective claims in each of the sets of proceedings (see, by analogy, judgment of 14\u00a0October 2004,\u00a0\u2026…& Gas, C\u00a039\/02, EU:C:2004:615, paragraph\u00a036).<\/p>\n
41\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0In the present case, it must be stated that actions initiated before the High Court of Justice of England and Wales, Chancery Division and the Landgericht Hamburg (Regional Court, Hamburg) respectively concern claims which only partially overlap. Even though the actions concern the use of the name \u2018Merck\u2019 on the internet in domain names and on social medial platforms, the content of which are accessible in the same form worldwide, it should be observed that the action brought before the High Court of Justice of England and Wales, Chancery Division, which is based on rights resulting from a trade mark registered in the United Kingdom, seeks to prohibit the use of the name \u2018Merck\u2019 in the United Kingdom, while the action brought before the Landgericht Hamburg (Regional Court, Hamburg), which is based on rights resulting from an EU trade mark, seeks to prohibit the use of that name in the territory of the European Union.<\/p>\n
42\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0In view of the objective of Article\u00a0190(1)(a) of Regulation No\u00a0207\/2009, set out in paragraph\u00a031 above, the actions initiated before the courts listed in the previous paragraph must, for the application of the provision, be found to have the same subject matter only in so far as the alleged infringements relate to the same territory.<\/p>\n
43\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Any other interpretation would lead to the result that the possibilities for a proprietor of an EU trade mark\u00a0\u2014 who has initially brought an action for infringement against an alleged infringer on the basis of an identical national trade mark before a court of a Member State having jurisdiction, in infringement matters, limited solely to the territory of that Member State\u00a0\u2014 to assert the rights which he derives from an EU trade mark in the territory of other Member States would be unduly restricted. Such an interpretation would be contrary to the objective, referred to in recital 15 of Regulation No\u00a0207\/2009, of strengthening the protection of EU trade marks.<\/p>\n
44\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0In view of the foregoing considerations, the answer to the first and second questions is that Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 must be interpreted as meaning that the condition laid down in that provision as to the existence of the \u2018same cause of action\u2019 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.<\/p>\n
The third and fourth questions<\/p>\n
45\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0By its third and fourth questions, which it is appropriate to examine together, the referring court asks, in essence, whether Article\u00a0109(1)(a) of Regulation No\u00a0207\/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 in 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 as regards the action for infringement brought before it in its entirety, or must only 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.<\/p>\n
46\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0It should be noted that the wording of Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 does not specify, 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, the extent to which the court other than the court first seised must decline jurisdiction in favour of the court first seised.<\/p>\n
47\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0However, it is clear from the objective of Article\u00a0109 of Regulation No\u00a0207\/2009, set out in paragraph\u00a031 above and in the answer to the first and second questions, that the declinature of jurisdiction laid down in Article\u00a0109(1)(a) of the regulation may apply only to the extent that the actions brought before those courts involve the same cause of action (see, to that effect, judgment of 6\u00a0December 1994,\u00a0Tatry, C\u00a0406\/92, EU:C:1994:400, paragraphs\u00a033 and 34).<\/p>\n
48\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0The condition regarding the existence of the \u2018same cause of action\u2019 within the meaning of Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 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.<\/p>\n
49\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Admittedly, as the defendants in the main proceedings have pointed out, in accordance with Article\u00a01(2) of Regulation No\u00a0207\/2009, the EU trade mark has a unitary character. Having equal effect throughout the European Union, it may not, in accordance with that provision, unless otherwise provided in that regulation, be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor may its use be prohibited, save in respect of the whole of the European Union. Furthermore, it follows from recital 3 of Regulation No\u00a0207\/2009 that the objective pursued by that regulation involves the creation of arrangements for EU trade marks to which uniform protection is given and which produce their effects throughout the entire area of the European Union. Lastly, according to recital 16 of that regulation, the effects of decisions regarding the validity and infringement of EU trade marks must cover the entire area of the European Union in order to prevent inconsistent decisions on the part of the courts and of EUIPO and to ensure that the unitary character of EU trade marks is not undermined.<\/p>\n
50\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Thus, in order to guarantee the uniform protection throughout the entire area of the European Union of the right conferred by the EU trade mark against the risk of infringement, the prohibition by a competent EU trade mark court on proceeding with acts which infringe or would infringe an EU trade mark must therefore, as a rule, extend to the entire area of the European Union (judgments of 12\u00a0April 2011,\u00a0DHL Express France, C\u00a0235\/09, EU:C:2011:238, paragraph\u00a044, and of 22\u00a0September 2016,\u00a0combit Software, C\u00a0223\/15, EU:C:2016:719, paragraph\u00a030).<\/p>\n
51\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0However, the territorial scope of the prohibition may in certain circumstances be restricted (judgments of 12\u00a0April 2011,\u00a0DHL Express France, C\u00a0235\/09, EU:C:2011:238, paragraph\u00a046, and of 22\u00a0September 2016,\u00a0combit Software, C\u00a0223\/15, EU:C:2016:719, paragraph\u00a031).<\/p>\n
52\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0As the Advocate General observed in point\u00a082 of his Opinion, this must also apply when the court other than the court first seised is required partially to decline jurisdiction pursuant to Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009.<\/p>\n
53\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0In the light of the foregoing considerations, the answer to the third and fourth questions is that Article\u00a0109(1)(a) of Regulation No\u00a0207\/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.<\/p>\n
The fifth and sixth questions<\/p>\n
54\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0By its fifth and sixth questions, which it is appropriate to examine together, the referring court asks, in essence, whether Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 must be interpreted as meaning that the condition laid down in that provision as to the existence of the \u2018same cause of action\u2019 is 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.<\/p>\n
55\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0It is clear from the order for reference that the fifth and sixth questions are based on the premiss that Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 does not allow the court other than the court first seised partially to decline jurisdiction in relation to the action brought before it.<\/p>\n
56\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0However, as is apparent from the answer to the first to fourth questions, 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, relating to an alleged infringement of a national trade mark and an identical EU trade mark in the territory of the same Member States and in the entire territory of the European Union, the court other than the court first seised must decline jurisdiction only 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.<\/p>\n
57\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0It follows that where, following a partial withdrawal, properly declared by the applicant, 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 for infringement 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, the court other than the court first seised is not required to decline jurisdiction in favour of the court first seised.<\/p>\n
58\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0In the light of the foregoing considerations, the answer to the fifth and sixth questions is that Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 must be interpreted as meaning that the condition laid down in that provision as to the existence of the \u2018same cause of action\u2019 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.<\/p>\n
The seventh question<\/p>\n
59\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0By its seventh question, the referring court asks, in essence, whether Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 must be interpreted as meaning that the court other than the court first seised, where the national trade mark and the EU trade mark are identical, must decline jurisdiction in favour of the court first seised only in so far as those trade marks are valid for identical goods or services, or whether the court other than the court first seised also lacks jurisdiction where the EU trade mark relied on before the court other than the court first seised is registered for additional goods and services not covered by the identical national trade mark relied on before the court first seised.<\/p>\n
60\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0In that regard, it is clear from the wording of Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 that that provision applies \u2018where the trade marks concerned are identical and valid for identical goods or services\u2019.<\/p>\n
61\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0It follows that the court other than the court first seised must, where the EU trade mark and the national trade mark are identical, decline jurisdiction in favour of the court first seised only in so far as those trade marks are valid for identical goods or services.<\/p>\n
62\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0In the light of the foregoing considerations, the answer to the seventh question is that Article\u00a0109(1)(a) of Regulation No\u00a0207\/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 services.<\/p>\n
Costs<\/p>\n
63\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.<\/p>\n
On those grounds, the Court (Second Chamber) hereby rules:<\/p>\n
1.\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Article\u00a0109(1)(a) of Council Regulation (EC) No\u00a0207\/2009 of 26\u00a0February 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 \u2018same cause of action\u2019 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.<\/p>\n
2.\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Article\u00a0109(1)(a) of Regulation No\u00a0207\/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.<\/p>\n
3.\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Article\u00a0109(1)(a) of Regulation No\u00a0207\/2009 must be interpreted as meaning that the condition laid down in that provision as to the existence of the \u2018same cause of action\u2019 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.<\/p>\n
4.\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0Article\u00a0109(1)(a) of Regulation No\u00a0207\/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.<\/p>\n
Source Curia<\/p>\n
<\/p>\n","protected":false},"excerpt":{"rendered":"
(Reference for a preliminary ruling\u00a0\u2014 Regulation (EC) No\u00a0207\/2009\u00a0\u2014 EU trade mark\u00a0\u2014 Article\u00a0109(1)\u00a0\u2014 Civil actions on the basis of EU trade marks and national trade marks\u00a0\u2014 Lis pendens\u00a0\u2014 Meaning of \u2018same cause of action\u2019\u00a0\u2014 Use of the name \u2018…..\u2019 on the internet in domain names and on social media platforms\u00a0\u2014 One action based on a national trade mark followed by another based on an EU trade mark\u00a0\u2014 Disclaimer of jurisdiction\u00a0\u2014 Scope) In Case C\u00a0231\/16, REQUEST for a preliminary ruling under Article\u00a0267 TFEU from the Landgericht Hamburg (Regional Court, Hamburg, Germany), made by decision of 14\u00a0April 2016, received at the Court on…<\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[223],"tags":[],"yoast_head":"\n