The Community trade mark Courts: territorial jurisdiction

First, under Article 91(1) of the CTMR, the European Community Member States are required to designate some national courts of first (trial) and second (appeal) instance to act as “Community trade mark Courts” with exclusive jurisdiction for infringement.⁴⁵ The number of such courts should be as limited as possible.

However, these courts are not “Community Courts”. They are national courts that remain part of the legal system of the Member State in which they are situated, and act as any other national court called upon to implement the Community law when implement the CTMR.

The reason behind Article 91 is the establishment of specialized courts justified by the need to ensure that a right representing such a valuable asset as a CTM is dealt with in specialized courts by judges with special knowledge and experience in trade mark cases.

These courts even have jurisdiction, if so requested by the defendant in infringement proceedings by way of a counterclaim, to revoke or to declare invalid the CTM with effect for the whole territory of the European Union. If there were no such designated Community trade mark Courts, there would be a risk that in some cases the actions would be heard by courts lacking the indispensable experience related to CTMs.⁴⁶

It is important to emphasize that when such national courts are sitting as Community trade mark Courts, they will apply the substantive law of the regulation rather than the national, directive-consistent trade mark law of the state in which they sit. Certain matters are, however, left to national law, such as procedural laws, remedies for infringement other than injunctions, interim measures, and appeals. For example, an appeal goes to the Community trade mark Courts of second instance from judgments of the Community

44 Mario Franzosi, supra note 43, at 372.

45 For a list of CTM Courts, see http://oami.europa.eu/de/office/aspects/tmc/liste_tmc.htm.

46 Mario Franzosi, supra note 43, at 383.

trade mark Courts of first instance in respect of proceeding arising from relevant actions.⁴⁷ The conditions under which an appeal may be lodged with a Community trade mark court of second instance are determined by the national law of the Member State in which that court is located. National rules concerning further appeal are also applicable in respect of decisions of Community trade mark Courts of second instance.

While most of the Member States only nominated a few courts, Germany and Italy designated a large number of Community trade mark Courts. In Germany this is because of its federal system and the fact that the German States (Länder) have the competence to organize the courts, so of course every State in Germany wanted to have Community trade mark courts of its own. The Courts are supposed to be specialized in CTM law. However, some Member States have several courts and their specialization and knowledge might not always be sufficient. In Germany there are a few courts, for example München, Köln and Düsseldorf, which have the reputation for being more knowledgeable in CTM matters than others.

Second, Article 92 of the CTMR provides that Community trade mark Courts have exclusive jurisdiction for: (a) all infringement actions and all actions in respect of threatened infringement (provided they are permitted under the national law of the court having power) relating to CTMs; (b) actions for a declaration of non-infringement, if such are permitted under national law; (c) actions for reasonable compensation in respect of matters arising between the date of publication of the CTM application and the date of publication of the registration of the said mark; and (d) counterclaims for revocation or for declaration of invalidity of a CTM raised in infringement actions or actions for

(a) for all infringement actions and — if they are permitted under national law — actions in respect of threatened infringement relating to Community trade marks;

(b) for actions for declaration of non-infringement, if they are permitted under national law;

(c) for all actions brought as a result of acts referred to in Article 9 (3), second sentence;

(d) for counterclaims for revocation or for a declaration of invalidity of the Community trade mark

Article 91 must be seen in the light of the unitary set of rules on international jurisdiction contained in Article 93, according to which it can be established in each case in which Member State a court has jurisdiction for dealing with infringement and invalidity proceedings. Article 93 of the CTMR determines the jurisdictions in which the CTM registrant may bring enforcement proceedings:

1. the Member State in which the defendant has his domicile (its registered office in case of a legal person),

2. the Member State where the defendant has an establishment,

3. the Member State where the plaintiff has his domicile (its registered office in case of a legal person),

4. the Member State where the plaintiff has an establishment, 5. the Member State where the OHIM has its seat, i.e. Spain.

It is through these two main instruments that the CTMR governs jurisdiction for the legal actions mentioned above: first, the designation by each EC Member State of a number as limited as possible of so-called “Community trade mark Courts”; second, a set of rules of choice of jurisdiction to the effect that in each case, regardless of whether the parties have their domicile within or beyond the European Union, a competent court can always be clearly identified.⁴⁹

This thesis will focus exclusively on actions for infringement of a CTM. For infringement actions the plaintiff has in each case the choice between two alternative jurisdictions:

1. a court situated in the Member State where the defendant (the alleged infringer) has his domicile or, if this criterion fails, in a Member State determined by applying some subsidiary criteria, (Article 93(1) to (3)), or

2. a court situated in the Member State where the act of infringement was committed (Article 93(5)).

pursuant to Article 96.

49 CTMR, supra note 1, Art. 93.