The CJEUs Interpretation of Establishment Will it Promote Forum - - PowerPoint PPT Presentation

The CJEU’s Interpretation of “Establishment” – Will it Promote Forum Shopping or Effective Trademark Enforcement?

26th Annual Fordham Intellectual Property Law & Policy Conference New York, April 5-6, 2018 Thies Bösling

EU-wide jurisdiction over trademark infringement claims

• Courts of the Member State where defendant is domiciled
• If defendant is not domiciled in the EU: Courts of the Member State where

defendant has an establishment

• If defendant is neither domiciled nor has an establishment in the EU: Courts of

the Member State where plaintiff is domiciled

• If defendant is neither domiciled nor has an establishment in the EU and plaintiff

is not domiciled in the EU: Courts of the Member State where plaintiff has an establishment

• If neither the defendant nor the plaintiff is so domiciled or has such an

establishment in EU: Courts of the Member State where EUIPO has its seat (Spain)

The “Cascade”


• Defendant

Domicile Defendant Establishment Plaintiff Domicile Plaintiff Establishment EUIPO Seat

“Establishment” prior to Hummel v. Nike (C-617/15)

‘Branch’, ‘agency’ or ‘other establishment’ within the meaning of the Brussels Convention implies

• a center of operations which has the appearance of permanency, such as the

extension of a parent body. It must have a management and be materially equipped to negotiate business with third parties, so that they do not have to deal directly with the parent body;

• the dispute must concern acts relating to the management of those entities or

commitments entered into by them on behalf of the parent body.

(see, e.g., CJEU judgment of July 19, 2012 – C-154/11, mn. 48 – Mahamdia – ECLI:EU:C:2012:491)


“Establishment” prior to Hummel v. Nike (C-617/15) However: “A subsidiary is not an establishment since it has its own legal personality.”

(see, e.g., EUIPO Guidelines Part A - General Rules - Sec. 5, Para. 3.1.1.)


Interpretation of “establishment” in Hummel v. Nike

• “establishment” in EUTMR ≠ “establishment” in Brussels Convention
• “establishment” in EUTMR implies

“a center of operations which, in the Member State where it is located, has a certain real and stable presence from which commercial activity is pursued, and has the appearance of permanency to the outside world, such as an extension of the parent body.”

(CJEU judgment of May 18, 2017 – C-617/15, mn. 21 et seq. – Hummel/Nike – ECLI:EU:C:2017:390)


Interpretation of “establishment” in Hummel v. Nike

• it is irrelevant whether the “establishment“ has legal personality
• the “establishment“ may be a legally distinct subsidiary or sub-subsidiary
• the same parent body may have several “establishments“ in the EU
• it is irrelevant whether the “establishment“ participated in the alleged

infringement

• the “establishment“ need not be a party to the proceedings against the parent

body

(CJEU judgment of May 18, 2017 – C-617/15, mn. 21 et seq. – Hummel/Nike – ECLI:EU:C:2017:390)


Example

Effective enforcement of EU trademarks or unfair “forum shopping“?


Thank you very much for your attention.

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