CJEU clarifies jurisdiction rules in ‘Merck’ trademark battle
Europe’s highest court has found that in parallel lawsuits dealing with an identical trademark, the first court must take priority over the second—but not in all cases.
In its decision today, October 19, the Court of Justice of the European Union (CJEU) was asked to rule on the so-called ‘lis pendens’ rule, in a dispute over the ‘Merck’ trademark.
Lis pendens, laid out in article 109(1)(a) of the 207/2009 EU trademark regulation, seeks to avoid contradictory judgments when two courts are dealing with the same case.
The dispute stems from a long-running battle between four Merck companies.
German company Merck KGaA had sought two injunctions preventing use of its ‘Merck’ trademark in domain names, social media platforms and as a business name.
The first action, filed in the UK against Merck & Co and Merck Sharp & Dohme, concerned the UK national trademark for ‘Merck’.
In the second claim, which was lodged shortly afterwards in Germany against the same companies plus MSD Sharp & Dohme, Merck KGaA sought an injunction based on its EU trademark for ‘Merck’.
The four companies were initially part of the same group but have been completely separate since 1919.
In the German case, Merck KGaA asked the Hamburg Regional Court to remove its infringement claims insofar as they related to the UK.
But the defendants said this request was irrelevant because, in light of lis pendens, the German proceedings should be deemed inadmissable and the German court should decline jurisdiction.
The Hamburg court then referred seven questions to the CJEU, which provided four responses overall.
It first said that the term “same cause of action” in article 109(1)(a) of the 207/2009 regulation is satisfied where the same parties are contesting identical national and EU marks in different member states.
The court added that where the action concerning the national mark comes first, the second court must decline jurisdiction on aspects of the case relating to the first member state. This only applies to identical goods and services, it said.
However, the court added one caveat to the phrase “same cause of action”.
It said this is no longer is satisfied when an infringement action is partially withdrawn based on the national trademark of the first member state, which would mean “the actions in question no longer relate to an alleged infringement of a national trademark and an identical EU trademark in the territory of the same member states”.
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