Trademarks and inheritance – European court’s decision

juropean-justiceThe European court has ruled in Case C‑341/16 Hanssen Beleggingen BV v Tanja Prast-Knipping, which concerns the following:

On 7 September 1979, a company incorporated under German law owned by Mr Helmut Knipping, operating in the production of building components, in particular windows, applied to the Benelux Intellectual Property Office (Trade Marks and Designs) (‘BIPO’) for registration as a Benelux trade mark of the following word and figurative sign:

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BIPO registered that trade mark in black and white under No 361604 (‘trade mark No 361604’).

Hanssen is a company incorporated under Dutch law operating in the door and window trade. It is the proprietor of Benelux word and figurative trade mark No 0684759. That trade mark is comprised of the same word and figurative sign as that covered by trade mark No 361604, but is registered in blue and yellow.

On 9 October 1995, Mr Knipping died.

On 14 November 2003, Ms Prast-Knipping, on providing a certificate stating that she was the sole heiress of Mr Knipping, requested BIPO to register her as the proprietor of trade mark No 361604.

BIPO complied with the request for registration.

Hanssen contests the registration. It claims that trade mark No 361604 had, prior to the death of Mr Knipping, been assigned several times and was no longer part of his estate at the time of his death. The registration of Ms Prast-Knipping as the proprietor of that trade mark was therefore unjustified.

Since the dispute was unable to be resolved by amicable agreement, on 8 June 2012, Hanssen brought an action against Ms Prast-Knipping before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany), the court of the place where Ms Prast-Knipping is domiciled. Hanssen founded its action on unjustified enrichment under Paragraph 812 of the German Civil Code and sought an order that Ms Prast-Knipping declare at BIPO that she is not entitled to the trade mark in question and to waive the registration of her name as proprietor.

In a judgment of 24 June 2015, the Landgericht Düsseldorf (Regional Court, Düsseldorf) dismissed that action on the ground that, at the time when Mr Knipping died, trade mark No 361604 formed part of his estate and had therefore been correctly transferred to Ms Prast-Knipping by universal succession.

Hanssen brought an appeal against that judgment before the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany).

That court harbours doubts as to the jurisdiction of the German courts to hear the case. It considers that whilst jurisdiction could derive from Article 2(1) of Regulation No 44/2001, it is also possible that the courts of the Member State in which registration of the trade mark at issue in the main proceedings has taken place — namely the Netherlands, since the seat of BIPO is located at The Hague — have exclusive jurisdiction under Article 22(4) of that regulation.

Since jurisdiction must be assessed of the court’s own motion, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) wishes the matter to be clarified.

25      According to the referring court, it is necessary, in particular, to determine whether an action such as that brought by Hanssen amounts to proceedings ‘concerned with the registration or validity of … trade marks’ within the meaning of Article 22(4) of the regulation. The judgment of 15 November 1983, Duijnstee (288/82, EU:C:1983:326), provides indicia suggesting that that question be answered in the negative, but, in the light of the development of trade mark law since that judgment, it is not certain that that judgment must still be taken into account.

As regards the development of trade mark law, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) cites, inter alia, Article 18 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21) (‘Regulation No 207/2009’).

The referring court also mentions the fact that, as regards jurisdiction, Benelux trade marks are characterised by certain specific features.

In those circumstances, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Does the notion of proceedings which are “concerned with the registration or validity of … trade marks”, within the meaning of Article 22(4) of Regulation [No 44/2001], also cover a claim, brought against the formal proprietor of a Benelux trade mark registered in the Benelux trade mark register, which seeks an order requiring that defendant to make a declaration to [BIPO] that she has no entitlement to the contested mark and that she waives registration as the proprietor of that mark?’

The Court’s decision:

Article 22(4) 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 not applying to proceedings to determine whether a person was correctly registered as the proprietor of a trade mark.

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