1.

By decision of 14 June 2016, received at the Court on 16 June 2016, the Oberlandesgericht Düsseldorf (Higher Regional Court of Düsseldorf) submitted a request to the Court for a preliminary ruling on the interpretation of 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 (‘Brussels I’). ( 2 )

2.

The request has been made in proceedings between Hanssen Beleggingen BV and Tanja Prast-Knipping concerning a Benelux mark of which the latter is the formal proprietor.

3.

The referring court enquires whether the dispute before it falls within the scope of the exclusive jurisdiction rule laid down in Article 22(4) of Brussels I in respect of proceedings ‘concerned with the registration or validity of … trade marks’, meaning that the German courts — including the referring court — would not have jurisdiction to entertain the dispute. If, on the other hand, the dispute does not fall within the scope of the exclusive jurisdiction rule, the German courts would have jurisdiction under the general jurisdiction rule laid down in Article 2(1) of Brussels I.

4.

In what follows, I will set out the reasons why, in my view, proceedings such as those brought before the referring court, seeking an order requiring the person formally registered as proprietor of a mark to make a declaration to the competent authority that she has no entitlement to the mark and that she waives registration as the proprietor of that mark, does not fall within the scope of the exclusive jurisdiction rule laid down in Article 22(4) of Brussels I.

5.

Under the general jurisdiction rule laid down in Article 2(1) of Brussels I, ‘subject to this Regulation, persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State’.

6.

The first subparagraph of Article 22(4) of Brussels I, which appears in Section 6 of Chapter II 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.

7.

The main proceedings concern rights relating to a Benelux mark. Ms Prast-Knipping, who is the defendant in the main proceedings, resides in Hamminkeln (Germany). She is registered as proprietor of the figurative mark No 361604, reproduced below, at the Office Benelux de la propriété intellectuelle (Benelux Office for Intellectual Property, ‘OBPI’).

8.

An application for registration of that mark was made on 7 September 1979 in favour of the undertaking Helmut Knipping. After submitting a certificate of inheritance to the OBPI identifying her as sole heiress of Mr Knipping, Ms Prast-Knipping secured the transfer of the contested mark into her name on 14 November 2003.

9.

Hanssen Beleggingen BV (‘Hanssen Beleggingen’), the applicant in the main proceedings, is a company with seat in the Netherlands.

10.

By its application, Hanssen Beleggingen seeks an order requiring Ms Prast-Knipping to make a declaration to the OBPI stating that she is not entitled to the contested mark and that she waives registration as the trade mark proprietor. In support of its application, Hanssen Beleggingen submits that, as a result of a chain of transfers of the contested mark, it has become the actual proprietor of the rights to the contested mark. It submits that it therefore has a statutory claim against Ms Prast-Knipping for the corresponding declarations to be made to the OBPI.

11.

The Landgericht Düsseldorf (Regional Court of Düsseldorf) dismissed the application by judgment of 24 June 2015 on the ground that Hanssen Beleggingen was not entitled to claim against Ms Prast-Knipping by reason of unjust enrichment, because Ms Prast-Knipping was not incorrectly registered as being formally entitled to the contested mark in the Benelux trade mark register. The court found that the contested mark was, at the time of Mr Knipping’s death, among his assets and was therefore transferred by universal succession to Ms Prast-Knipping as sole heiress. It did not address the issue of the international jurisdiction of the German courts, which has not been challenged by Ms Prast-Knipping.

12.

Hanssen Beleggingen brought an appeal against the above judgment before the Oberlandesgericht Düsseldorf (Higher Regional Court of Düsseldorf). That court has doubts concerning the international jurisdiction of the German courts. It states that such jurisdiction could be founded on Article 2(1) of Brussels I, given that Ms Prast-Knipping is domiciled in Germany. However, the assumption of the international jurisdiction of the German courts might, however, be precluded by the exclusive international jurisdiction of the Netherlands courts in accordance with Article 22(4) of Brussels I.

13.

The referring court has also stated that, under Article 66(1) of Regulation No 1215/2012, Brussels I applies ratione temporis to the main proceedings since they were instituted before 10 January 2015.

14.

In those circumstances, the Oberlandesgericht Düsseldorf (Higher Regional Court of Düsseldorf) decided to stay the proceedings and to refer the following question to the Court 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 [Brussels I], 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 the [OBPI] that she has no entitlement to the contested mark and that she waives registration as the proprietor of that mark?’

15.

Written observations were submitted by Ms Prast-Knipping and the European Commission. No hearing took place.

16.

By the question it submits for a preliminary ruling, the referring court asks the Court whether an action such as that brought in the main proceedings, seeking an order requiring the person formally registered as proprietor of a Benelux mark to make a declaration to the OBPI that she has no entitlement to the mark and that she waives registration as the proprietor of that mark, falls within the scope of Article 22(4) of Brussels I.

17.

Both Ms Prast-Knipping and the Commission take the view that this question should be answered in the negative. I share that view for the following reasons.

18.

The Court has already had occasion to adjudicate on the scope of the exclusive jurisdiction rule laid down in Article 22(4) of Brussels I, particularly in Duijnstee. ( 3 ) One of the questions the Court addressed in that judgment was the interpretation of the concept of ‘proceedings concerned with the registration or validity of patents’ within the meaning of Article 16(4) of the Convention of 27 September 1968 on jurisdiction and the enforcement of judgments in civil and commercial matters. ( 4 ) I consider that that judgment, which involves proceedings similar to the main proceedings in this case, is of critical relevance here. I note that the Court essentially confirmed the principles deriving from that judgment in GAT. ( 5 )

19.

In Duijnstee, Mr Duijnstee, the liquidator in the winding-up of Schroefboutenfabriek BV, brought an action against Mr Goderbauer, the former manager of that undertaking, seeking an order requiring him to transfer to the company the patents applied for and the patents granted in 22 countries in respect of an invention which Mr Goderbauer had made while employed by the company. ( 6 )

20.

The Court considered that concept to be an independent concept intended to have uniform application in all contracting States. ( 7 )

21.

In order to interpret that concept, the Court stated that the exclusive jurisdiction in proceedings concerned with the registration or validity of patents conferred upon the courts of the contracting State in which the deposit or registration has been applied for or taken place is justified by the fact that those courts are best placed to adjudicate on cases in which the dispute itself concerns the validity of the patent or the existence of the deposit or registration. ( 8 )

22.

Consequently, the Court held that the scope of the exclusive jurisdiction rule, interpreted narrowly in the light of the aim of proximity mentioned above, is restricted to proceedings relating to the validity, existence or lapse of a patent or an alleged right of priority by reason of an earlier deposit. ( 9 )

23.

At the conclusion of its reasoning, the Court found that the action pending before the national court did not fall within the scope of Article 16(4) of the Brussels Convention thus defined, since it concerned neither the validity nor registration of the disputed patents and was confined to the question whether Mr Goderbauer or the insolvent company Schroefboutenfabriek was entitled to the patent, which had to be determined on the basis of the legal relationship existing between the parties concerned. ( 10 )

24.

That line of reasoning seems to me to be fully capable of being applied to this case for the following reasons.

25.

In the first place, the Court has already had occasion to find that, in the light of the high degree of similarity between Article 22(4) of Brussels I and Article 16(4) of the Brussels Convention, it is necessary to ensure continuity in the interpretation of those two provisions, in accordance with recital 19 of Brussels I. ( 11 ) Indeed, Article 22(4) of Brussels I reflects the same system as Article 16(4) of the Brussels Convention and is, moreover, drafted in almost identical terms. ( 12 ) According to settled case-law, the interpretation provided by the Court in respect of the provisions of the Brussels Convention is also valid for those of Brussels I whenever the provisions of those instruments may be regarded as equivalent. ( 13 )

26.

In the second place, I see no reason not to extend the test established by the Court concerning patents in Duijnstee ( 14 ) to proceedings concerning trade marks. The wording of Article 22(4) of Brussels I does not draw any distinction between proceedings concerned with patents and those concerned with trade marks. Furthermore, the concepts of validity, existence, lapse or an alleged right of priority by reason of an earlier deposit are also relevant to trade marks.

27.

In the third place, and pursuant to the test established by the Court in Duijnstee, ( 15 ) I note that the main proceedings in this case do not relate to the validity, existence or lapse of the trade mark or an alleged right of priority by reason of an earlier deposit. They are solely concerned with whether the proprietor of the contested mark is Ms Prast-Knipping or Hanssen Beleggingen, which must be determined on the basis of the legal relationship existing between the parties concerned, just as in the main proceedings in Duijnstee. In other words, as the Commission rightly pointed out, the instant case does not relate to the trade mark as such but to the identification of its proprietor, which is not concerned with the registration or validity of the trade mark within the meaning of Article 22(4) of Brussels I.

28.

In that regard, the fact that the action brought by Hanssen Beleggingen seeks, inter alia, to have Ms Prast-Knipping waive registration as the proprietor of the contested mark does not mean that the main proceedings fall within the concept of ‘proceedings concerned with the registration or validity of … trade marks’ within the meaning of the abovementioned provision. That application is merely ancillary to the main application, which seeks recognition that the contested mark does not belong to Ms Prast-Knipping due to the existence of private agreements providing for the transfer of the mark to Hanssen Beleggingen. ( 16 ) As explained in the previous point, such a dispute does not relate to the validity, existence or lapse of the mark, or to an alleged right of priority by reason of an earlier deposit.

29.

In the fourth place, as Ms Prast-Knipping and the Commission pointed out, the aim of proximity pursued by Article 22(4) of Brussels I does not prevent the main proceedings falling within the scope of the exclusive jurisdiction rule laid down in that provision. ( 17 ) The arguments under consideration in the main proceedings, which concern, in particular, the existence of unjust enrichment and the scope of agreements between private parties, ( 18 ) is extraneous to the question of the validity or registration of the contested mark. Accordingly, the courts of the State in which the mark has been registered are best placed to adjudicate on such arguments.

30.

In my view it follows from the foregoing that the main proceedings do not fall within the scope of the exclusive jurisdiction rule laid down in Article 22(4) of Brussels I. Consequently, the German courts — including the referring court — have, as courts of the Member State where the defendant in the main proceedings, Ms Prast-Knipping, is domiciled, international jurisdiction to entertain those proceedings, under the general jurisdiction rule provided for in Article 2(1) of Brussels I.

31.

I should make clear in that regard that the fact that the proceedings at issue may possibly fall within the scope of Article 5(3) of Brussels I, because the action brought by Hanssen Beleggingen is, in particular, based on the existence of unjust enrichment, has no bearing on the German courts’ jurisdiction under Article 2(1) thereof. The former provision establishes an additional — and not exclusive — ground of jurisdiction in relation to the ground set out in the latter provision.

32.

In the alternative, if the Court finds that the main proceedings fall within the scope of Article 22(4) of Brussels I, the only courts with jurisdiction to entertain the proceedings would be the courts of the Member State in which the mark has been registered. That provision lays down an exclusive ground of jurisdiction the effect of which is to preclude the application of the general jurisdiction rule laid down in Article 2(1) of Brussels I.

33.

According to the information provided by the referring court, the application of Article 22(4) of Brussels I would mean that the German courts would not have jurisdiction to entertain the main proceedings. ( 19 )

34.

I wish to draw attention to the implications of Brite Strike Technologies ( 20 ) in such circumstances. It is true that the Court held in that judgment that Article 71 of Brussels I, read in the light of Article 350 TFEU, does not preclude the application to those disputes of the rule of jurisdiction for disputes relating to Benelux trademarks and designs, laid down in Article 4.6 of the Benelux Convention on Intellectual Property (Trade Marks and Designs) ( 21 ) (‘the Benelux Convention’).

35.

However, that case-law seems to me to be irrelevant for the purpose of deciding whether the German courts have international jurisdiction, which is the subject matter of the main proceedings, since the Federal Republic of Germany is not a party to the Benelux Convention. To my mind, it is hard to imagine how a convention to which the Federal Republic of Germany is not a party could produce binding effects with respect to the German courts. I note that, unlike this case, Brite Strike Technologies ( 22 ) concerned proceedings before a court in the Netherlands.

36.

That interpretation is supported, were any such support needed, by the wording of Article 71(2)(a) of Brussels I, which applies, in its own words, to ‘a court of a Member State, which is a party to a convention on a particular matter’. ( 23 )

37.

Consequently, if the Court were to find that the main proceedings fell within the scope of Article 22(4) of Brussels I, the referring court would be required to declare of its own motion that it has no jurisdiction pursuant to Article 25 thereof. Only if the main proceedings had been brought before a court of a Benelux Member State could Article 4.6 of the Benelux Convention be taken into account by that court for the purpose of examining its jurisdiction, in accordance with the judgment in Brite Strike Technologies. ( 24 )

38.

In the light of the foregoing considerations, I propose that the Court answer the question referred for a preliminary ruling by the Oberlandesgericht Düsseldorf (Higher Regional Court of Düsseldorf, Germany) as follows:

An action such as that brought in the main proceedings, seeking an order requiring the person formally registered as proprietor of a Benelux mark to make a declaration to the Office Benelux de la propriété intellectuelle (Benelux Office for Intellectual Property, OBPI) that she has no entitlement to the mark and that she waives registration as the proprietor of that mark, does not fall within the scope of 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.

(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;