Community Trade Mark Infringements in the Netherlands: how exclusive is the jurisdiction of The Hague District Court?

In the Netherlands, in first instance proceedings, only the District Court The Hague, and the Presiding Judge of that Court in summary proceedings, have exclusive jurisdiction to decide actions governed by article 96 Community Trade Mark Regulation (CTMR). This exclusive jurisdiction is laid down in article 3 of the Dutch Implementation Act. Accordingly fighting a 96 CTMR action before other courts in the Netherlands is commonly regarded as no good practice. One walks the line and that line leads to The Hague. Well it seems to lead to The Hague, because it is not as simple as one and one is two.

Especially not if article 103 CTMR is read carefully: this provision clearly determines that applications for provisional and protective measures in respect of a CTM or a CTM application (!) may be made to the courts of a Member State, including Community trade mark courts, even if, under the CTMR, a Community trade mark court of another Member State has jurisdiction as to the substance of the matter. Article 103 apparently reserves juridisction for other courts of a Member State, not being a Community trade mark court. This observation raises a question of validity with regard to the Dutch implementation act, because the implementation act could be read as providing exclusive jurisdiction to the Presiding Judge of the District Court The Hague in summary proceedings.

In a decision of May 27, 2010 9 (Albanu/Pomerol) in summary proceedings the Presiding Judge of the District Court of Breda (Leijten) held that article of the Dutch implementation act is binding and not contrary to article 103 CTMR: the Presiding Judge considered that article 3 matched with the rationale behind article 95 CTMR to designate only a small as possible number of Community trade mark courts in the territories of each Member State. Accordingly the Presiding Judge in Breda decided to have no jurisdiction.

On January 4, 2007 (Tommy Hilfiger/The Sting) the Court of Appeal of Amsterdam (Coeterier, Van Lingen en Huijser) – deciding on an appeal against a decision of the Presiding Judge of the District Court of Amsterdam – rejected the objection raised by defendant in appeal that the Presiding Judge had no jurisdiction, in so far as the case concerned an alleged infringement of a CTM. Only the (Presiding Judge of) District Court of The Hague would have jurisdiction to deal with that matter. The Presiding Judge had accepted jurisdiction according to article 99 CTMR (now article 103 CTMR): the alleged infringements had actually also occurred in Amsterdam, while the provisional measures applied for – injunction for example – should be enforced also in Amsterdam. The Court of Appeal held that from the wording of article 99 par. 1 and 2 follows that the Presiding Judge of the District Court of The Hague has only exclusive jurisdiction if the provisional measures applied for should have effect in the territories of each Member State. Furthermore it considered that article 3 of the Implementation Act does not alter this outcome, since, even if this provision might be contrary to article 99 par. 1 and 2 CTMR, the CTMR has direct effect and national provisions contrary to the CTMR may not be applied. A decision that might be correct if one considers that article 103 par. 2 CTMR denies an extraterritorial jurisdiction to a Community trade mark court that has only jurisdiction because an infringement occured within its territory.

This week the Presiding Judge of the District Court Breda (Leijten) once again had to consider this issue: with a decision of August 12, 2010 (Heerkens/Fergan) the Presiding Judge rejected the defense that only the Presiding Judge of the District Court The Hague had jurisdiction to grant permission for the provisional measures applied for (seizure of evidence and infringing goods) and not the Presiding Judge of the District Court. Referring to a decision of the Court of Appeal ‘s-Hertogenbosch that had denied this viewpoint the Presiding Judge passed the defense (GvR: it is not clear which one exactly, might the Presiding Judge mean the Amsterdam Court of Appeal decision?) In an obiter dictum the Presiding Judge states to have considered to refer the following question to the Court of Justice (ECJ) for a preliminary ruling: does article 103 CTMR allow the national legislator of a Member State to provide an exclusive jurisdiction for one specialized court for the community trade mark, like in the Netherlands the District Court The Hague. However the Presiding Judge finally decided not to do this to give this opportunity to the Court of Appeal in case of an appeal.

A real pity that the Presiding Judge did not refer the question to the ECJ to clarify this issue, because an appeal is not sure and if the Court of Appeal has already denied the exclusive jurisdiction of the District Court, it is most probable that this question will not reach the ECJ, let alone that the question will be formulated.