–

Merck KGaA, by S. Völker and M. Pemsel, Rechtsanwälte,

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Merck & Co. Inc., Merck Sharp & Dohme Corp. and MSD Sharp & Dohme GmbH, by A. Bothe, Y. Draheim and P. Fromlowitz, Rechtsanwälte,

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the European Commission, by T. Scharf and M. Wilderspin, acting as Agents,

1

This request for a preliminary ruling concerns the interpretation of Article 109(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2

The request been made in proceedings between Merck KGaA and Merck & Co. Inc., Merck Sharp & Dohme Corp. and MSD Sharp & Dohme GmbH, concerning the former’s applications for an injunction prohibiting the latter companies from using the name ‘MERCK’ 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.

3

Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (OJ 2001 L 12, p. 1) replaced, in relations between the Member States, the Convention of 27 September 1968 on jurisdiction and the enforcement of judgments in civil and commercial matters (OJ 1978 L 304, p. 36),

4

Recital 15 of Regulation No 44/2001 stated:

‘In 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 lis pendens … ’

5

Article 27 of that regulation, which was in Section 9 of Chapter II, entitled ‘Lis pendens — related actions’, provided:

‘1.   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 shall of its own motion stay its proceedings until such time as the jurisdiction of the court first seised is established.

2.   Where 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.’

6

Recitals 3 and 15 to 17 Regulation No 207/2009 state:

…

7

Article 1(2) of Regulation No 207/2009 states:

‘An 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.’

8

Article 109 of that regulation, entitled ‘Simultaneous and successive civil actions on the basis of [EU] trade marks and national trade marks’, in Section 1 of Title XI of that regulation, which is entitled ‘Civil actions on the basis of more than one trade mark’, states, in paragraph 1(a):

‘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:

9

The applicant in the main proceedings, Merck, is a chemical and pharmaceutical undertaking which, according to the order for reference, employs approximately 40000 employees and operates in 67 countries worldwide.

10

The first defendant in the main proceedings, Merck & Co., is the publicly listed parent company of the second defendant in the main proceedings, Merck Sharp & Dohme, which primarily sells medicines and vaccines, as well as cosmetic and healthcare products. According to the order for reference, Merck Sharp & Dohme 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, MSD Sharp & Dohme, is a German subsidiary of Merck & Co.

11

The 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.

12

It is clear from the order for reference that Merck is the proprietor of the national trade mark MERCK, registered in the United Kingdom. It is also the proprietor of the EU word mark MERCK 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 June 1957, as revised and amended, and for services in Class 42 of that agreement.

13

Several agreements were entered into successively between the company which was Merck’s predecessor in title and the company which was Merck Sharp & Dohme’s predecessor in title. Those agreements, the most recent of which is still in force, laid down rules governing the use of Merck’s trade marks by Merck Sharp & Dohme in Germany and in other states.

14

From the website of the defendants in the main proceedings, www.merck.com, 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.merckengage.com, www.merckvaccines.com or www.merck-animal-health.com. 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.

15

Alongside their internet domain names, Merck & Co. and Merck Sharp & Dohme have established other forms of online visibility on several social media platforms.

16

On 8 March 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, Merck & Co. and Merck Sharp & Dohme, for an alleged infringement of its national trade mark due to the use of the name ‘Merck’ in the United Kingdom.

17

On 11 March 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 MSD Sharp & Dohme, on the basis of the EU trade mark of which it is the proprietor.

18

As 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.

19

By pleadings of 11 November 2014, 12 March 2015, 10 September 2015 and 22 December 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

20

The defendants in the main proceedings take the view that the action pending before the referring court is inadmissible in the light of Article 109(1)(a) of Regulation No 207/2009, 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.

21

The Landgericht Hamburg (Regional Court, Hamburg) notes that Article 109(1)(a) of Regulation No 207/2009 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.

22

In 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:

23

By its first and second questions, which it is appropriate to examine together, the referring court asks, in essence, whether 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 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.

24

Under Article 109(1)(a) of Regulation No 207/2009, 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.

25

The wording of Article 109(1)(a) of Regulation No 207/2009 does not define what is to be understood by the phrase ‘same cause of action’ in that provision.

26

It must be recalled that, according to the Court’s 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 May 2016, Envirotec Denmark, C‑550/14, EU:C:2016:354, paragraph 27, and of 18 May 2017, Hummel Holding, C‑617/15, EU:C:2017:390, paragraph 22 and the case-law cited).

27

At the outset, it should be pointed out that the scope of Article 109(1)(a) of Regulation No 207/2009 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 March 2017, Al Chodor, C‑528/15, EU:C:2017:213, paragraph 32 and the case-law cited).

28

While certain language versions, such as the Spanish, French and Slovenian language versions make reference to actions for infringement brought involving ‘the same acts’, other language versions, such as the English and Lithuanian language versions, refer to actions involving the ‘same cause of action’ or, even, such as the Danish language version, to actions with the same ‘subject matter’ and ‘legal basis’.

29

As regards the context of the provision at issue, it should be noted, first, that, as is clear from recital 17 of Regulation No 207/2009, Article 109 of that regulation is modelled on the rules on lis pendens contained in Regulation No 44/2001, Article 27(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 27(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.

30

Second, it should be pointed out that the procedural rules laid down by Regulation No 207/2009 are lex specialis in relation to the procedural rules contained in Regulation No 44/2001. Thus, pursuant to Article 94(1) of Regulation No 207/2009, the provisions of Regulation No 44/2001 are, in so far as Regulation No 207/2009 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.

31

As regards the objective of Article 109(1) of Regulation No 207/2009, 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.

32

That 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.

33

It must therefore be found that the condition relating to the existence of the ‘same cause of action’ within the meaning of Article 109(1) of Regulation No 207/2009 must be given the same interpretation as that given by the Court to the condition relating to the existence of proceedings involving the ‘same cause of action’ within the meaning of Article 27(1) of Regulation No 44/2001.

34

Furthermore, 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.

35

It follows from the foregoing considerations that, in order to establish whether, in the context of the application of Article 109(1) of Regulation No 207/2009, the condition relating to the existence of the ‘same cause of action’ is satisfied, it is necessary, as the Advocate General indicated in points 49 and 50 of his Opinion, to establish whether the actions for infringement under Article 109(1)(a) of Regulation No 207/2009 have the same cause of action.

36

According to the case-law on Article 21 of the Convention of 27 September 1968 on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters, the Court’s interpretation of which is equally valid for Article 27 of Regulation No 44/2001, the ‘cause of action’ comprises the facts and the rule of law relied on as the basis of the action (see, by analogy, judgments of 6 December 1994, Tatry, C‑406/92, EU:C:1994:400, paragraph 39, and of 22 October 2015, Aannemingsbedrijf Aertssen and Aertssen Terrassements, C‑523/14, EU:C:2015:722, paragraph 43).

37

In the present case, first, it is necessary to find, as did the Advocate General in point 51 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 109(1)(a) of Regulation No 207/2009, 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 lis pendens laid down in Article 109(1)(a) of Regulation No 207/2009.

38

Second, 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 ‘Merck’ 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.

39

As regards the ‘subject matter’, the Court has stated that this means the end the action has in view (see, by analogy, judgments of 6 December 1994, Tatry, C‑406/92, EU:C:1994:400, paragraph 41, and of 8 May 2003, Gantner Electronic, C‑111/01, EU:C:2003:257, paragraph 25); the concept of ‘subject matter’ cannot be restricted so as to mean two claims which are formally identical (see, by analogy, judgment of 8 December 1987, Gubisch Maschinenfabrik, 144/86, EU:C:1987:528, paragraph 17).

40

Account must be taken in that regard of the applicants’ respective claims in each of the sets of proceedings (see, by analogy, judgment of 14 October 2004, Mærsk Olie & Gas, C‑39/02, EU:C:2004:615, paragraph 36).

41

In 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 ‘Merck’ 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 ‘Merck’ 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.

42

In view of the objective of Article 190(1)(a) of Regulation No 207/2009, set out in paragraph 31 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.

43

Any other interpretation would lead to the result that the possibilities for a proprietor of an EU trade mark — 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 — 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 207/2009, of strengthening the protection of EU trade marks.

44

In view of the foregoing considerations, the answer to the first and second questions is that 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 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.

45

By its third and fourth questions, which it is appropriate to examine together, the referring court asks, in essence, whether 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 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.

46

It should be noted that the wording of Article 109(1)(a) of Regulation No 207/2009 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.

47

However, it is clear from the objective of Article 109 of Regulation No 207/2009, set out in paragraph 31 above and in the answer to the first and second questions, that the declinature of jurisdiction laid down in Article 109(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 December 1994, Tatry, C‑406/92, EU:C:1994:400, paragraphs 33 and 34).

48

The condition regarding the existence of the ‘same cause of action’ within the meaning of Article 109(1)(a) of Regulation No 207/2009 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.

49

Admittedly, as the defendants in the main proceedings have pointed out, in accordance with Article 1(2) of Regulation No 207/2009, 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 207/2009 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.

50

Thus, 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 April 2011, DHL Express France, C‑235/09, EU:C:2011:238, paragraph 44, and of 22 September 2016, combit Software, C‑223/15, EU:C:2016:719, paragraph 30).

51

However, the territorial scope of the prohibition may in certain circumstances be restricted (judgments of 12 April 2011, DHL Express France, C‑235/09, EU:C:2011:238, paragraph 46, and of 22 September 2016, combit Software, C‑223/15, EU:C:2016:719, paragraph 31).

52

As the Advocate General observed in point 82 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 109(1)(a) of Regulation No 207/2009.

53

In the light of the foregoing considerations, the answer to the third and fourth questions is that 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.

54

By its fifth and sixth questions, which it is appropriate to examine together, the referring court asks, in essence, whether 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 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.

55

It is clear from the order for reference that the fifth and sixth questions are based on the premiss that Article 109(1)(a) of Regulation No 207/2009 does not allow the court other than the court first seised partially to decline jurisdiction in relation to the action brought before it.

56

However, 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.

57

It 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.

58

In the light of the foregoing considerations, the answer to the fifth and sixth questions is that 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.

59

By its seventh question, the referring court asks, in essence, whether Article 109(1)(a) of Regulation No 207/2009 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.

60

In that regard, it is clear from the wording of Article 109(1)(a) of Regulation No 207/2009 that that provision applies ‘where the trade marks concerned are identical and valid for identical goods or services’.

61

It 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.

62

In the light of the foregoing considerations, the answer to the seventh question is that 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 services.

63

Since 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.

On those grounds, the Court (Second Chamber) hereby rules: