1 Μαρτίου, 1999
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Άρθρο του Στάθη Κουτσοχήνα δημοσιευμένο στο περιοδικό TRADEMARK WORLD, τεύχος 115, Μάρτιος 1999, σελ. 31-36
Electrolux v Dyson
Jurisdiction and Procedure in Legal Actions Relating to Com.munity Trade Marks
Jurisdiction and Procedure in Legal Actions Relating to Community Trade Marks
Stathis Koutsochinas
The higher the number of applications, the bigger the percentage of disputes brought before the national or the European courts. This is the point where the crucial test of the CTM system’s effectiveness lies. Does the new system provide for an efficacious protection of trademark rights? In order to be capable of answering this question, one should first consider the relevant articles of the Regulation concerning jurisdiction and procedure in legal actions relating to CTMs.
The judicial protection related to CTMs is divided into two levels: on the one hand, as far as actions against decisions of the OHIM are concerned, at a Community level, the Court of Justice (ECJ) has jurisdiction to annul or to alter the contested decision.3 On the other hand, as far as actions for infringement of CTM rights are concerned, at a national level, Community Trade Mark courts shall have jurisdiction.4
Article 63 states that “Actions may be brought before the ECJ against decisions of the Board of Appeals on appeals”. According to paragraph 13 of the preamble to Regulation 40/94, the jurisdiction, which the Regulation confers on the ECJ to cancel and reform decisions of the appeal courts shall be exercised at the first instance with regard to the Council Decision 88/591/ECSC, EEC, Euratom of October 24, 1988 establishing a Court of First Instance of the European Communities,5 as amended by Decision 93/350/Euratom, ECSC, EEC of June 8. 1993.6 The decision in issue provides that the Court of First Instance CFI shall exercise, at the first instance, the jurisdiction conferred on the ECJ by the treaties establishing the Communities and by the acts adopted in implementation thereof. Therefore. this particular court is competent to deal with the actions mentioned in Article 63, subject to a right of appeal to the ECJ.
Actions of Article 63 are open to any party to proceeding before the Board of Appeals, which is adversely affected by its decision, and must be brought before the CFI within two months after the date of notification of the decision of the Board of Appeals.8 The grounds on which the action may be brought are the same with those of Article 173 EC Treaty, namely lack of competence. infringement of an essential procedural requirement. infringement of the EC Treaty or of Regulation 40/94 and misuse of power.9
It is inferred that the actions of Article 63 are shaped in accordance with Article’s 173 EC Treaty right of appeal before the ECJ, which may review the legality of acts adopted jointly by the European Parliament and the Council, of acts of the Council, of the Commission and of the ECB, other than recommendations and opinions, and of the acts of the European Parliament intended to produce legal effects vis-à-vis third parties.10 Nevertheless, unlike the general right of appeal of Article 173
S 4 EC Treaty, the actions of Article 63 have the following characteristics:
Moreover, it should be noted that the actions of Article 63 are very close lo EC Treaty Article 173’s right of appeal where no other party takes part lo the proceedings before OHIM, that is to the proceedings concerning the lack of characteristics which render a sign ineligible for registration or concerning the absolute grounds for refusal, which are ex officio examined by OHIM.15 On the other hand, the actions of Article 63 have differences from Article’s 173 EC Treaty right of appeal where the contested decision of OHIM is provoked by an opposition by the proprietor of an earlier trademark (relative grounds for refusal16) or by an application of a third party for revocation or for a declaration of invalidity. 17 In such cases, the Board of Appeals is called to resolve a difference between two or more proprietors of the contested mark and problems may arise by the implementation of the procedural rules of the CFI in actions of Article 63. Thus, in a hypothetical situation where a competitor of a CTM’s proprietor brings an action of Article 63 before the CFI, the action will he addressed against OHIM. The CTM’s proprietor would not be notified of the action and, even in the case that he would be aware of it, he could only take part in the proceedings before the CFI by an intervention in favour of OHIM. He would then be confined to support OHIM and if OHIM would not rebut the action in time, he would not be in a position to defend himself against it. 18
As the above made clear, the Community courts will have to confront new problems relating to the procedure and the applicable law in the actions of Article 63 of Regulation 40/94. In addition, the courts will be heavily burdened by the actions of Article 63 brought before them. It is estimated by OHIM that more than 400 actions of Article 63 will be brought before the CFI annually. It is obvious that such a flow of cases could exhaust the CFI’s capacities, especially after the enlargement of the CFI’s jurisdiction and the important increase of cases in respect of the fields of competition, state aids and anti-dumping. 19 Eventually, the ECJ will not remain unaffected by the growth of cases dealt with by the CFI. If the right of appeal against the decisions of the CFI is exercised even by 25 percent, the ECJ will have to deal with more than 100 cases concerning CTM’s annually. The above remarks should not be underestimated: the load of cases may prove to be unbearable for the Community courts.
Procedure before the national courts
Rather than create a special Community court to deal with CTM litigation, the Regulation leaves the enforcement of the CTM right lo national law. 20 A preliminary requirement is that each Member State must designate as limited a number as possible of first and second instance courts to deal with CTM litigation. 21 These ‘Community trademark courts’ – which, despite their characterization, are in fact national courts – are required to apply the provisions of the Regulation to a trademark case, and apply their own national law only to matters not covered by the Regulation. 22
The Regulation draws a distinction between proceedings relating to infringement and validity of a CTM, including proceedings for a declaration of non-infringement, and proceedings relating to other matters concerning a CTM, such as ownership and licensing. 23 Jurisdiction for proceedings relating to infringement and validity of a CTM is governed by the CTM Regulation and by the Brussels Convention on Jurisdiction and the Enforcement of Judgements in Civil and Commercial Matters 1968 (the Brussels Convention) 24 save where the Brussels Convention is rendered inapplicable or varied by the CTM Regulation. 25
The CTM courts have exclusive jurisdiction for proceedings relating to:
(d) counterclaims for revocation or for declaration of invalidity of the CTM. 29
In order to determine whether a CTM court has extra-territorial subject matter jurisdiction – that is, jurisdiction over acts of infringement in other Member States – the Regulation draws a distinction between two jurisdiction criteria: domicile and act of infringement. Thus, if the jurisdiction of a CTM court is based on domicile, then it has extra-territorial subject matter jurisdiction. 30 Contrarily, if a court’s jurisdiction is based on an act of infringement in the Member State where that CTM court is located, then it has jurisdiction only over acts of infringement in that Member State. 31
In particular, the rules for determining the proper forum32 provide that the proceedings must be brought in the CTM court of the Member State in which that defendant is domiciled or, if he is not domiciled in any Member State, in which he has an establishment.33 If the defendant is not domiciled and does not have an establishment in any of the Member States, the proceedings shall be brought in the CTM court of the Member State, in which he has an establishment.34 If both the defendant and the plaintiff are neither domiciled nor have an establishment in any Member State, the proceedings must be brought in the CTM courts of the Member State where OHIM has its seat, that is, in the Spanish CTM courts. 35
Notwithstanding the above rules, the parties may agree that a different CTM court shall have jurisdiction, in which case Article 17 of the Brussels Convention applies. 36
Moreover, if a defendant enters an appearance before a CTM court which would not normally have jurisdiction by the application of the above rules, Article 18 of the Brussels Convention applies and confers that CTM court jurisdiction provided that the defendant has not entered an appearance solely to contest jurisdiction. 37
In all the above cases, the CTM court in which the proceedings are brought will have extra-territorial subject matter jurisdiction38 The final rule for determining jurisdiction provides that the CTM courts in a Member State in which an act of infringement has taken place also have jurisdiction which, however, is limited to the acts of infringement in that Member State.39
Furthermore, the Regulation provides to a plaintiff the possibility of applying to the national courts of a Member State, including CTM courts, for such provisional relief as is available under the national law of that Member State in respect of a national trademark registration. If the court is in fact a CTM court and has extra-territorial subject matter jurisdiction, it may grant extra-territorial provisional relief.40
As far as the conduct of related CTM actions is concerned,41 the following remarks should be made. According to the relevant rules laid down in the Brussels Convention, in the case of proceedings involving the same cause of action and the same parties, the second court seized of the matter must decline jurisdiction.42 Nevertheless, in the case of proceedings involving related causes of action, the second court seized may stay the proceedings pending the outcome of the proceedings in the court first seized, or may decline jurisdiction.43
The CTM Regulation contains detailed rules concerning the stay of proceedings where the issue of validity is before another CTM court or OHIM44. Notwithstanding the Regulation establishes the principle of priority for such matters, it tends to favour the Community institutions. Thus, the CTM court hearing a counterclaim for revocation or for invalidity may stay the proceedings on application by the proprietor of the CTM and may request the defendant to submit an application for revocation or for a declaration of invalidity to the OHIM, within a time limit which it shall determine.45 In addition, a possibility exists for a CTM court which first deals with a counterclaim proceedings and allow the later seized OHIM to continue the proceedings pending before it.46
A further point to note is that the rules contained in Regulation 40/94 concerning the stay of proceedings may result in a long period of delay before the grant of judicial protection. In circumstances where a CTM court decides to stay the proceedings because of an application for revocation or for a declaration of invalidity filed at OHIM, the litigants will have to wait for the CTM court to continue the proceedings pending before it until the following procedure terminates:
a) OHIM will decide on the application for revocation or for a declaration of invalidity;47
b) against the decision of OHIM an appeal may be exercised;48
c) against the decision of the Board of Appeals an action may be brought before the CFI;49 and
d) against the decision appeal may be exercised before the ECJ.50
Besides, it should be considered that it is not certain whether the CTM courts have in fact the power to decide on the issue of validity of a CTM right or they must refer to the ECJ for issuing such decisions.51
Another issue of great practical importance is the possibility of forum shopping under the CTM Regulation: by applying the aforementioned rules for determining the jurisdiction of the CTM courts, it can be inferred that a CTM proprietor will be able, in most cases, to bring infringement proceedings in more than one Member State. Only in the three following situations he will have no opportunity of choice.52
a) where the infringer is domiciled in a Member State or has an establishment in only one Member State, and he is only infringing in that Member State;
b) where the infringer is not domiciled nor has an establishment in any of the Member States, and he is only infringing in the Member State in which the plaintiff is domiciled or has his only establishment;
c) where neither the infringer nor the plaintiff are domiciled in any of the Member States, nor have either of them any establishments in any of the Member States, and the infringer is only infringing in Spain (the Member State where OHIM is situated).
In any other case, the CTM proprietor will be able to bring infringement proceedings in at least two Member States, while the infringement will take place in at least one Member State other than the one which has jurisdiction on the basis of domicile.
Furthermore, the owner of the CTM will even be in a position, in the three following situations, to bring infringement proceedings in several Member States; 53
a) where the infringer, not being domiciled in any Member State, has establishments in many Member States;
b) where the infringer, not being domiciled nor having an establishment in any Member State, and the plaintiff, not being domiciled in any Member State, has establishments in many Member States;
c) where the infringement is widespread.
Consequently, the CTMR provides, in most cases, the owner of a CTM with the prospect of forum shopping for infringement proceedings. Therefore, the CTM proprietor should carefully consider, before deciding in which CTM court he will bring infringement proceedings, such factors as: cost, speed, competence, availability and grounds of appeal and evidence- gathering procedures.54 Moreover, he should take under consideration factors which are of particular importance to the special nature of the CTM system. These factors are:
■ Interpretation of the Regulation’s provisions. The CTM courts of the different Member States may adopt different interpretation routes for several concepts used in the CTM Regulation. The proprietor of a CTM should, therefore, examine which interpretation of the Regulation’s articles better serves his interests. For example, the Benelux courts will obviously be seen as more favourable to the CTM owner than the UK courts as regards the scope of the rights conferred to the owner under Article 9(1)(b), since the former, contrary to the latter, give a wide range of protection to the CTM proprietor by finding confusion more easily between two trademarks.
At first glance, it seems that the CTM proprietor will only be able to make a choice of interpretation in the early stages of operation of the CTM system and that this option will soon be emptied of its substance, as it is expected that the ECJ will, in the course of time, resolve the interpretation problems arising from the CTM Regulation and the Directive. However, as it was demonstrated by the recent decision of the ECJ in the Sabel v Puma case55 referred by the German Federal Supreme Court, which dealt with the problem of interpreting Article 4(1)(b) of the Directive and Article 9(1)(b) of the Regulation,56 the judgements of the ECJ will not always provide clear solutions.57 As a result of this lack of clarity, which mirrors the difficulty of the ECJ in reaching a unanimous view, national courts will continue to find ways of determining cases in the way in which they have previously,58
■ Availability and scope of extra- territorial injunctions. The CTM proprietor should, furthermore, take into account the criterion on which a CTM court’s jurisdiction is based, as this will determine whether that court has extra- territorial subject matter jurisdiction. The prospect of obtaining a preliminary or final injunction in respect of all acts of infringement in the European Union will be an extremely important factor to be taken into account when deciding where to bring infringement proceedings.59
The issue of extra- territorial jurisdiction becomes more important when considered in conjunction with the problem of different interpretation of the Regulation’s provisions. Thus, in a hypothetical case, alleged infringement of a CTM takes place in Member States A, B and C and the alleged infringer is domiciled in Member State D. Suppose that the courts of Member States A and B are reluctant to find confusion between two marks, while the courts of Member States C and D, which traditionally adopt the non-origin association concept, offer a wider range of protection to the CTM right owner. It would be for the interests of the CTM proprietor to bring infringement proceedings in the CTM courts of Member State C or D in order to take advantage of their interpretation of the CTM provisions. Moreover, it would be for the CTM proprietor’s benefit to bring infringement proceedings especially in Member State D, since the CTM courts of this State have extra-territorial jurisdiction (Articles 93(1) and 94(1)), and consequently, can decide even on the alleged infringement taking place in Member States A and B. If, on the contrary, infringement proceedings were brought in the courts of Member State C, then the CTM courts of this State, not extra-territorial jurisdiction (Articles 93(5) & 94(2)), could not decide on the alleged infringement taking place in Member States A and B. In this case, there is a possibility that the CTM courts of Member State A or B later examine the alleged infringement taking place in their respective country without finding confusion.60
■ Stay of related CTM proceedings. The CTM proprietor should also take into consideration that, if a delay occurs before obtaining a final judgment on the issue of infringement because the court orders the proceedings to be stayed pending the outcome of other proceedings in the court of another Member State or of proceedings before the OHIM in either of which the validity of the CTM is in issue, he may not be adequately protected during the delay period, despite the fact that the CTM court may order provisional relief pending the outcome of the other proceedings. The CTM proprietor should, therefore, select a CTM court which is reluctant to order the proceedings to be stayed. Note that in the context of patent infringement proceedings, the approach taken by the courts of the different Member States to pending opposition proceedings before the EPO varies considerably: the English courts are reluctant to grant a stay pending the determination of opposition proceedings, while, on the contrary, most other European courts appear to do so almost as a matter of course.61
Conclusions
The above is an attempt to present the basic features of Regulation 40/94 as regards the judicial protection granted to the CTM rights owners. The articles examined provide, beyond any doubt, several tempting options to the CTM proprietor: the decentralisation of jurisdiction to national CTM courts will secure decisions at a level which is as close as possible to reality. The infringement of a CTM taking place in several Member States may be prosecuted centrally before a single court having extra-territorial subject matter jurisdiction, the judgment of which shall be valid throughout the European Union and save the CTM proprietor from additional costs. The possibility of granting provisional measures and, finally, the choice of forum, which is allowed by the Regulation, may be proved to be valuable instruments to the hands of the CTM proprietor.
On the contrary, an overload of the Community courts dealing with the CTM cases, several problems of procedure before the Community courts -caused by the special nature of the CTM, a possible delay in obtaining a final decision (particularly in the case that four levels of jurisdiction must be exhausted), a potential application by the CTM courts of national laws of other Member States, the existence of terms which are not defined by the Regulation (‘special grounds’ of Article 100), may constitute restraining factors for the provision of an efficacious judicial protection concerning CTM rights. Whether the system established by the draftsmen of the CTM Regulation will be proved to be successful and confirm the optimistic opinions emanating from the great number of CTM applications filed so far, is a question that only time may answer.
© Stathis Koutsochinas 1999. The author is a member of the Thessaloniki Bar, Aristotelian University of
Thessaloniki, 47 Polytechneiou Street, 546 25 Thessaloniki, Greece; tel (30) 31 532141: fax (30) 31 523731.
Notes
1. 43,193 applications was the final count, whereas only 15,000 applications were expected.
2. Established by Council Regulation No 40/94 of December 20, 1993 on the Community Trade Mark (OJ 1994 L11/1, January 14, 1994). Unless indicated otherwise, all references in this opinion to articles are to those of the Regulation.
3. Article 63 § 3.
4. Article 91.
5. OJ 1319, November 25, 1988, at 1 and corrigendum in OJ L241, August 17, 1989, at 4.
6. OJ L144, June 16, 1993, at 21.
7. Article 168A EC Treaty.
8. Article 63 §§ 4 and 5.
9. Article 63 § 2.
10. Since the competent authorities of the Community have the right, on the basis of Article 235 EC Treaty, to create new Community institutions (Regulation 40/94 being an example), it would not be in accordance with the fundamental principles of a lawful Community not to secure, against the aforementioned institutions, the same legal protection with that of Article 173 EC Treaty: Hans Jung, ‘The Community Trade Mark and the Judicial Protection’, El D (Elliniki Dikaiosyni = Greek Justice) 1996, pp 1015-1023, at pp 1015-1016. See also Decision of May 15, 1986 Case 222/84, Johnston/Chief Constable.
11. Article 63 § 1.
12. Article 63 § 4.
13. Article 63 § 3.
14. Article 62 § 3, contrary to Article
185 EC Treaty.
15. Articles 36-38.
16. Article 8.
17. Article 55.
18. In order to resolve the aforementioned problems, a proposal for an amendment of the procedural rules of the ECJ and of the Court of First Instance was submitted to the Council. See Hans Jung, note 10 above, at p 1017.
19. Between the years 1990 and 1994 the number of cases brought before the Court of First Instance became four times higher. See Hans Jung, note 10 above, at p 1019.
20. See Annand & Norman,
Blackstone’s Guide to Trade Marks Act 1994, Blackstone Press Ltd, 1994, at p
256.
21. Article 91.
22. Article 97. Matters which are not covered by the Regulation and therefore are left to national law to determine are rules of procedure (Article 97 $3), sanctions for trademark infringement (Article 98), interim measures (Article 99) and appeals (Article 101).
23. See Jenkins, ‘Forum Shopping Under the Community Trade Mark Regulation’, Trademark World, February 1996, pp 24-28, at p. 24; See Title X, Sections 2 and 3 of the Regulation.
24. It is noteworthy that, because the Brussels Convention has been amended as a result of new Member States joining the EU, the same text is not necessarily in force in all Member States. Accordingly, the CTM Regulation provides that the text of the Brussels Convention relied on by a Member State is that text in force at any given time: Article 104.
25. Jurisdiction for proceedings relating to CTM matters other than infringement and validity is governed solely by the Brussels Convention on the basis that the CTM is treated as if it were a national trademark (Article 102 § 1): Jenkins, note 23 above, at pp 24,28.
26. Article 92(a). 27. Article 92(b).
28. Articles 92(c) & 9(3).
29. Article 92(d).
30. Article 94 § 1. An interesting point lies on the case where a CTM court, which deals with a matter of an infringement of a CTM right, has extra- territorial subject matter jurisdiction (that is jurisdiction based on domicile) and, moreover, the infringement is widespread, taking place in several Member States. This fact, in conjunction with Article 98 §§ 1, 2 (which states that in respect to all sanctions, except from the one of the issuing of an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the CTM, the CTM court shall apply the law of the Member State to which the acts of infringement or threatened infringement were committed), leads to the result that the CTM court will have to apply all national laws of the Member States where the infringement takes place, for the aforementioned matters. Furthermore, according to Article 9752, the CTM court will have to apply, for the matters which are not governed by the Regulation, its national law including its private international law rules, which, however, may provide that the law of another Member State must apply!
31. Article 9452
32. Note that Articles 2, 4. 51. 563. 584 and 555 of the Brussels Convention which would otherwise determine jurisdiction are rendered inapplicable by the Regulation: Article 905 2.
33. Article 931. Note that the term ‘establishment’ is probably a shorthand version of the phrase ‘real and effective industrial or commercial establishment’ used in Article 5.
34. Article 93 5 2.
35. Article 93 53. Thus, the Community courts have jurisdiction for cases of infringement of a CTM right even if both litigants have establishments only outside the European Union. 36. Article 93 54(a). In the relevant part of Article 17 of the Brussels Convention it is stated that:
If the parties, one or more of whom is domiciled in a Contracting State, have agreed that a court or courts of a Contracting State are to have jurisdiction to settle any disputes which have arisen or which may arise in connection with a particular legal relationship, that court or those courts shall have exclusive jurisdiction. Such an agreement conferring jurisdiction shall be either in writing or evidenced in writing or in international trade and commerce in a form which accords with practices in that trade and commerce of which the parties are or ought to have been aware. Where such an agreement is concluded by parties none of whom is domiciled in a Contracting State, the courts of other Contracting States shall have no jurisdiction over their disputes unless the court or courts chosen have declined jurisdiction… If an agreement conferring jurisdiction was concluded for the benefit of only one of the parties, that party shall retain the right to bring proceedings in any other court which has jurisdiction by virtue of this Convention.
37. Article 93 § 4(b). Article 18 of the Brussels Convention provides: “Apart from jurisdiction derived from other provisions of this Convention, a court of a Contracting State before whom a defendant enters an appearance shall have jurisdiction. This rule shall not apply where appearance was entered solely to contest jurisdiction or where another court has exclusive jurisdiction by virtue of Article 16”.
38. Article 94 § 1.
39. Article 93 § 5 & 94 § 2. Note that this basis for jurisdiction is not applicable to proceedings for a declaration of non-infringement (Article 93 § 5). Thus, it is not possible for third parties to oblige the proprietor of the CTM right to make an appearance before a court of their choice: See Hans Jung, note 10 above, at p 1021. 40. Article 99.
41. The rules concerning the conduct of related CTM actions are provided by Articles 21 and 22 of the Brussels Convention as modified by Article 105 of the Regulation.
42. Article 21 of the Brussels Convention provides: “Where proceedings involving the same cause of action and between the same parties are brought in the courts of different Contracting States, any court other than the court first seized shall of its own motion decline jurisdiction in favour of that court. A court which would otherwise be required to decline jurisdiction may stay its proceedings if the jurisdiction of the other court is contested”.
43. Article 22 of the Brussels
Convention provides: “Where related actions are brought in the courts of different Contracting States, any court other than the court first seized may, while the actions are pending at first instance, stay its proceedings. A court other than the court first seized may also, in the application of one of the parties, decline jurisdiction if the law of that court permits the consolidation of related actions and the court first seized has jurisdiction over both actions. For the purposes of this Article, actions are deemed to be related where they are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings”.
44. Article 100 § 1 provides that a CTM court hearing an action other than one for declaration of non-infringement shall, unless there are special grounds
for continuing the hearing, of its own motion stay the proceedings where the validity of the CTM is already in issue before another CTM court on account of a counterclaim or where an application for revocation or for a declaration of invalidity has already been filed at the Office. Article 100 § 2 states that the OHIM, when hearing an application for revocation or for a declaration of invalidity shall, unless there are special grounds for continuing the hearing, of its own motion stay the proceedings where the validity of the CTM is already in issue on account of a counterclaim before a CTM court. However, if one of the parties so requests, the court may stay the proceedings and the OHIM shall in this instance continue the proceedings pending before it. Finally, Article 100 § 3, grants to the CTM court the power to order provisional and protective measures for the duration of the stay. It should be pointed out that the Regulation does not define which should be the ‘special grounds’ for continuing the hearing. This term is left to be delimited by the CTM courts and by OHIM, which have the option to use the ‘special grounds’ by judging the facts of every separate case.
45. Article 96 § 7.
46. Article 100 § 2.
47. Article 55.
48. Article 57.
49. Article 63. See subtitle ii. Procedure Before the Community Courts, above.
50. See Hans Jung, note 10 above, at p 1022. Nevertheless, the draftsmen of the Regulation seem to have considered such an option and granted to the CTM court the right to order provisional and protective measures for the duration of the stay (Article 100 $ 3).
51. See Decision of 22 October 1987, Case 314/83 Foto-Frost v Hauptzollamt Lubeck-Ost, according to which for the declaration of invalidity of a
Community institution’s act a monopoly of the Community courts exists. Against this opinion it can be submitted that the declaration of invalidity of a CTM right is a case of a conflict between private interests and not a case of common interest which aims to the preservation of the Community’s legal order. See Hans Jung, note 10 above, at P 1022.
52. See Jenkins, note 23 above, at p 26. 53. Ibid.
54. Ibid. For an analysis on the proceedings concerning trademark infringement in the countries of the EU, see Eva-Marina Bastian and Roland Knaak “Trademark Infringement Proceedings in the Countries of the European Union”, [1995] 2 IIC, pp 149- 174.
55. Sabel v Puma AG, Rudolf Dassler Sport, [1998] RPC 199.
56. More accurately, the ECJ dealt with the ambiguous issue of the adoption or not by the CTM Regulation and by the Directive of the non-origin association concept (see on this subject: Gielen, ‘European Trade Mark Legislation: The Statements’ [1996] 2 EIPR 83-89; Harris, ‘UK Trade Mark Law: Are You Confused? The Wagamama Decision’ [1995] 12 EIPR 601-603; Kamperman Sanders, The Wagamama Decision: Back to the Dark Ages of Trade Mark Law’ [1996] 1 EIPR 3-5; PRESCOTT, ‘Think Before You Waga Finger’ [1996] 6 EIPR 317-321; Kamperman Sanders, ‘The Return to Wagamama’, [1996] 10 EIPR 521; Prescott, ‘Has the Benelux Trade Mark Law Been Written into the Directive?’ [1997] 3 EIPR 99).
57. The court took the view that the mere association which the public might make between two trademarks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion within the meaning of the aforementioned provisions. Nevertheless, the decision makes little reference to origin confusion and gives some scope for manoeuvre by national courts, enabling them to find confusion if the mark is very well known or very distinctive (Isabel Davies and Ruth Annand, ‘European Court of Justice: Sabel v Puma’, Trademark World, January 1998, pp. 18-21, at pp 20 & 21). For more comments on the decision in issue see Anna Carboni, ‘Confusion Clarified’, [1998] 3 EIPR 107 and Charles Gielen ‘A Benelux Perspective’ [1998] 3 EIPR 109. 58. See Isabel Davies and Ruth Annand, note 57 above, at p. 21. 59. See Jenkins, note 23 above, at p. 27.
60. It is submitted that, as a practical matter, a final judgment obtained in one Member State is likely to determine the dispute between the parties in all the Member States where infringement proceedings may be brought: Jenkins, note 23 above, at p 27. However, as it was made clear by the above example, this is not so where problems of different interpretation arise.
61. See Jenkins, note 23 above, at p 27.
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