JURE SUMMARY

The appellant claims before the Bundespatentgericht (DE), a risk of confusion between its Community trademark and the national trademark of the trademark owner. In these proceedings the owner asserts that in different decisions from other European courts, a risk of confusion between the Community trademark and the respective national trademarks of the owner, identical to the national trademark challenged in this case, has been dismissed. These decisions shall, by analogous application of the Brussels Convention, be taken into account with the consequence that the trademark offices of each European jurisdiction have to give to them the same importance as if they were judgments rendered by courts of their respective jurisdictions. The Bundespatentgericht (DE) decides that the decisions of the other European courts have no effect in these proceedings. A corresponding application of the Brussels Convention is not possible. Article 16(4) Brussels Convention determines that the validity of national trademarks is decided exclusively by the national authorities and courts. Nothing more arises from Article 90(1) Regulation on Community trademarks, since the challenge of a national trademark does not constitute “proceedings concerning community trademarks”. Since for the validity of trademarks criteria like the meaning of signs are essential which depend on national linguistic conditions, national decisions according to Article 16(4) Brussels Convention on the validly of a trademark cannot represent “contradicting decisions” within the meaning of Article 21 Brussels Convention. In all cases national trademarks have been challenged. Due to the principle of territoriality, the scope of the foreign decisions is reduced to the declaration that there is no risk of confusion with the respective previous national trademarks having priority. This is the only statement of the provision of Article 26(1) Brussels Convention.