Beverage City & Lifestyle GmbH and Others v Advance Magazine Publishers, Inc (C-832/21)

Contents

Judgment of the Court (Fifth Chamber)7 September 2023^note(Reference for a preliminary ruling — Judicial cooperation in civil and commercial matters — Regulation (EU) No 1215/2012 — Jurisdiction and the recognition and enforcement of judgments in civil and commercial matters — Special jurisdiction — Article 8(1) — More than one defendant — Claims so closely connected that it is expedient to hear and determine them together — Anchor defendant — EU trade mark — Regulation (EU) 2017/1001 — Articles 122 and 125 — Action for infringement of an EU trade mark brought against a number of defendants domiciled in different Member States — Jurisdiction of the courts of the place where the managing director of a defendant company is domiciled — Jurisdiction of the court seised in respect of co-defendants domiciled outside the forum Member State — Concept of so closely connected — Exclusive distribution agreement between a supplier and its customer)In Case C‑832/21,REQUEST for a preliminary ruling under Article 267 TFEU from the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany), made by decision of 16 December 2021, received at the Court on 27 December 2021, in the proceedingsBeverage City & Lifestyle GmbH,MJ,Beverage City Polska Sp. z o.o.,FEvAdvance Magazine Publishers Inc.,THE COURT (Fifth Chamber),composed of E. Regan, President of the Chamber, D. Gratsias, M. Ilešič (Rapporteur), I. Jarukaitis and Z. Csehi, Judges,Advocate General: J. Richard de la Tour,Registrar: M. Krausenböck, Administrator,having regard to the written procedure and further to the hearing on 12 January 2023,after considering the observations submitted on behalf of:– Beverage City & Lifestyle GmbH and MJ, by M.C. Greisner, Rechtsanwalt,– Beverage City Polska Sp. z o.o. and FE, by M. Gil and M. Irmiński, adwokaci, and M. Oleksyn, radca prawny,– Advance Magazine Publishers Inc., by V. Ahmann, T. Raab and C. Tenkhoff, Rechtsanwälte,– the Polish Government, by B. Majczyna and S. Żyrek, acting as Agents,– the Portuguese Government, by P. Barros da Costa and S. Duarte Afonso, acting as Agents,– the European Commission, by P. Němečková, S. Noë and C. Vollrath, acting as Agents,after hearing the Opinion of the Advocate General at the sitting on 23 March 2023,gives the following

Judgment

1This request for a preliminary ruling concerns the interpretation of Article 8(1) of Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (OJ 2012 L 351, p. 1).

2The request has been made in proceedings between, on the one hand, Beverage City & Lifestyle GmbH, MJ, Beverage City Polska sp. z o.o. and FE and, on the other, Advance Magazine Publishers Inc., concerning an action for infringement of an EU trade mark brought by the latter company.

Legal context

European Union law

Regulation No 1215/2012

3Recitals 15, 16 and 21 of Regulation No 1215/2012 state:(15) The rules of jurisdiction should be highly predictable and founded on the principle that jurisdiction is generally based on the defendant’s domicile. Jurisdiction should always be available on this ground save in a few well-defined situations in which the subject matter of the dispute or the autonomy of the parties warrants a different connecting factor. The domicile of a legal person must be defined autonomously so as to make the common rules more transparent and avoid conflicts of jurisdiction.(16) In addition to the defendant’s domicile, there should be alternative grounds of jurisdiction based on a close connection between the court and the action or in order to facilitate the sound administration of justice. The existence of a close connection should ensure legal certainty and avoid the possibility of the defendant being sued in a court of a Member State which he could not reasonably have foreseen. This is important, particularly in disputes concerning non-contractual obligations arising out of violations of privacy and rights relating to personality, including defamation.…(21) In the interests of the harmonious administration of justice it is necessary to minimise the possibility of concurrent proceedings and to ensure that irreconcilable judgments will not be given in different Member States. There should be a clear and effective mechanism for resolving cases of lis pendens and related actions, and for obviating problems flowing from national differences as to the determination of the time when a case is regarded as pending. For the purposes of this Regulation, that time should be defined autonomously.’

4As set out in Article 4(1) of that regulation:‘Subject to this Regulation, persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State.’

5Article 8 of that regulation provides:‘A person domiciled in a Member State may also be sued:(1) where he is one of a number of defendants, in the courts for the place where any one of them is domiciled, provided the claims 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;…’

Regulation (EU) 2017/1001

6Article 1 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), headed ‘EU trade mark’, provides, in paragraph 2:‘An EU trade mark shall have a unitary character. It shall have equal effect throughout the [European] Union: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its use be prohibited, save in respect of the whole Union. This principle shall apply unless otherwise provided for in this Regulation.’

7Article 9 of that regulation, headed ‘Rights conferred by an EU trade mark’, states:1. The registration of an EU trade mark shall confer on the proprietor exclusive rights therein.2.Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where:(a) the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered;(b) the sign is identical with, or similar to, the EU trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;(c) the sign is identical with, or similar to, the EU trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to or not similar to those for which the EU trade mark is registered, where the latter has a reputation in the Union and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU trade mark.…4. Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall also be entitled to prevent all third parties from bringing goods, in the course of trade, into the Union without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorisation a trade mark which is identical with the EU trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark.The entitlement of the proprietor of an EU trade mark pursuant to the first subparagraph shall lapse if, during the proceedings to determine whether the EU trade mark has been infringed, initiated in accordance with Regulation (EU) No 608/2013 [of the European Parliament and of the Council of 12 June 2013 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No 1383/2003 (OJ 2013 L 181, p. 15)], evidence is provided by the declarant or the holder of the goods that the proprietor of the EU trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination.’

8Chapter X of Regulation 2017/1001, headed ‘Jurisdiction and procedure in legal actions relating to EU trade marks’, contains Articles 122 to 135 of that regulation.

9Article 122 of that regulation, headed ‘Application of Union rules on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters’, states, in paragraphs 1 and 2 thereof:1. Unless otherwise specified in this Regulation, the Union rules on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters shall apply to proceedings relating to EU trade marks and applications for EU trade marks, as well as to proceedings relating to simultaneous and successive actions on the basis of EU trade marks and national trade marks.2.In the case of proceedings in respect of the actions and claims referred to in Article 124:(a) Articles 4 and 6, points 1, 2, 3 and 5 of Article 7 and Article 35 of Regulation [No 1215/2012] shall not apply;(b) Articles 25 and 26 of Regulation [No 1215/2012] shall apply subject to the limitations in Article 125(4) of this Regulation;(c) the provisions of Chapter II of Regulation [No 1215/2012] which are applicable to persons domiciled in a Member State shall also be applicable to persons who do not have a domicile in any Member State but have an establishment therein.’

10Article 124 of Regulation 2017/1001, headed ‘Jurisdiction over infringement and validity’, provides:‘The EU trade mark courts shall have exclusive jurisdiction:(a) for all infringement actions and – if they are permitted under national law – actions in respect of threatened infringement relating to EU trade marks;…’

11Article 125 of that regulation, headed ‘International jurisdiction’, provides:1. Subject to the provisions of this Regulation as well as to any provisions of Regulation [No 1215/2012] applicable by virtue of Article 122, proceedings in respect of the actions and claims referred to in Article 124 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment.…5. Proceedings in respect of the actions and claims referred to in Article 124, with the exception of actions for a declaration of non-infringement of an EU trade mark, may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened, or in which an act referred to in Article 11(2) has been committed.’

The dispute in the main proceedings and the question referred for a preliminary ruling

12Advance Magazine Publishers, established in New York (United States), is the proprietor of a number of EU trade marks containing the word element ‘Vogue’, which it claims are trade marks with a reputation.

13Beverage City Polska is a company incorporated under Polish law and established in Kraków (Poland). It manufactures, advertises and distributes an energy drink under the name ‘Diamant Vogue’. Its managing director, FE, is also domiciled in Kraków.

14Beverage City & Lifestyle is a company incorporated under German law and established in Schorfheide in Brandenburg (Germany). Its managing director, MJ, is domiciled in Niederkassel in North Rhine-Westphalia (Germany). That company was connected with Beverage City Polska through an exclusive distribution agreement for Germany under which it sourced the energy drink referred to in the preceding paragraph from Beverage City Polska. Despite the similarity in name, the two companies do not belong to the same group.

15Taking the view that it had been the victim of acts of infringement of its trade marks, Advance Magazine Publishers brought an action against those companies and their respective managing directors before the EU trade mark court with jurisdiction for North Rhine-Westphalia, namely the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany), for injunctive relief throughout the European Union and for information, the disclosure of accounts and a declaration of liability for damages. Those supplementary claims were later limited to acts in Germany.

16The Landgericht Düsseldorf (Regional Court, Düsseldorf) upheld the action brought by Advance Magazine Publishers, basing its international jurisdiction in so far as concerns Beverage City Polska and FE on Article 8(1) of Regulation No 1215/2012. It found that the principles established by the Court of Justice in its judgment of 27 September 2017, Nintendo (C‑24/16 and C‑25/16, EU:C:2017:724), were applicable to the case in the main proceedings.

17Beverage City Polska and FE brought an appeal against the decision of the Landgericht Düsseldorf (Regional Court, Düsseldorf) before the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany).

18They argue that the German courts do not have international jurisdiction to hear and determine the action brought against them, stating that they had operated and delivered goods to their customers exclusively in Poland. In addition, the judgment of 27 September 2017, Nintendo (C‑24/16 and C‑25/16, EU:C:2017:724), is not, it is argued, transposable to their situation, since there is no relevant connection between them, on the one hand, and Beverage City & Lifestyle and MJ, on the other.

19The referring court considers that the international jurisdiction of the German courts to hear and determine the action against Beverage City Polska and FE is subject to the condition that, in accordance with Article 8(1) of Regulation No 1215/2012, that claim is so closely connected with that brought against MJ, described as the ‘anchor defendant’, that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.

20In the present case, in contrast to the case which gave rise to the judgment of 27 September 2017, Nintendo (C‑24/16 and C‑25/16, EU:C:2017:724), the supply relationship between Beverage City Polska and Beverage City & Lifestyle does not concern the anchor defendant against whom proceedings were brought only in his capacity as representative of the latter company. Furthermore, those two companies do not belong to the same group of companies and operate autonomously and independently of each other.

21The referring court is uncertain, however, whether the existence of an exclusive distribution agreement between Beverage City Polska and Beverage City & Lifestyle is sufficient to satisfy the condition laid down in Article 8(1) of Regulation No 1215/2012, it being noted that the case in the main proceedings concerns the same trade marks and the same goods.

22In those circumstances, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:‘Are claims “so closely connected” that it is expedient to hear and determine them together to prevent irreconcilable judgments, within the meaning of Article 8(1) of [Regulation No 1215/2012], where, in infringement proceedings for infringement of an EU trade mark, the connection consists in the fact that the defendant domiciled in a Member State (here, [the Republic of] Poland) supplied the goods which infringe an EU trade mark to a defendant domiciled in another Member State (here, [the Federal Republic of] Germany) whose legal representative, against whom infringement proceedings have also been brought, is the anchor defendant, if the parties are connected to each other only through the mere supply relationship beyond which there is no legal or factual connection?’

Consideration of the question referred

23By its question, the referring court seeks to ascertain, in essence, whether Article 8(1) of Regulation No 1215/2012 must be interpreted as meaning that a number of defendants, domiciled in different Member States, may be sued in the courts for the place where one of them is domiciled before which, in the context of an infringement action, claims have been brought against all of those defendants by the proprietor of an EU trade mark where they are each accused of having committed a materially identical infringement of that trade mark, where those defendants are connected by an exclusive distribution agreement.

24As a preliminary point, it should be recalled that, in accordance with Article 125(1) of Regulation 2017/1001, infringement actions, such as those at issue in the main proceedings, are to be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment, ‘subject to the provisions of [that] Regulation as well as to any provisions of Regulation [No 1215/2012] applicable by virtue of Article 122’ of the former regulation.

25Article 122(1) of Regulation 2017/1001 provides that ‘unless otherwise specified in this Regulation, the Union rules on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters shall apply to proceedings relating to EU trade marks and applications for EU trade marks, as well as to proceedings relating to simultaneous and successive actions on the basis of EU trade marks and national trade marks’. In addition, Article 122(2) lists the provisions of Regulation No 1215/2012 which are not applicable or which are applicable only under certain conditions to proceedings in respect of, inter alia, infringement actions.

26Since Article 8(1) of Regulation No 1215/2012 is not included within those provisions, it is applicable to infringement actions relating to EU trade marks.

27In particular, that provision states that a person domiciled in a Member State may be sued, where he is one of a number of defendants, in the courts for the place where any one of them is domiciled, provided the claims 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.

28In order for judgments to be regarded as irreconcilable, it is not sufficient that there be a divergence in the outcome of the disputes, but that divergence must also arise in the context of the same situation of fact and law (see, by analogy, judgment of 27 September 2017, Nintendo, C‑24/16 and C‑25/16, EU:C:2017:724, paragraph 45 and the case-law cited).

29As regards, in the first place, the condition relating to the existence of the same situation of law, the Court has held, in a case involving an alleged infringement of rights conferred by Community designs, that that condition is satisfied where an applicant is seeking to protect an exclusive right to use such Community designs, enshrined in EU law and having the same effect throughout the European Union, since any difference in the legal bases under national law of claims relating to that protection is irrelevant to the assessment of the risk of conflicting decisions (see, by analogy, judgment of 27 September 2017, Nintendo, C‑24/16 and C‑25/16, EU:C:2017:724, paragraphs 46 to 49 and the case-law cited).

30In relation to EU trade marks, it should be borne in mind, first, that an exclusive right is granted to the proprietor of such a mark by its registration, pursuant to Article 9 of Regulation 2017/1001 and, secondly, that, in accordance with Article 1(2) of that regulation, the EU trade mark is to have equal effect throughout the European Union. It thus follows from the exclusive right conferred on the proprietor of an EU trade mark that he is able to prohibit any third party from using it without his consent and to protect it by means of an action for infringement.

31In the present case, it is apparent from the request for a preliminary ruling that the infringement action brought by Advance Magazine Publishers concern the protection of that company’s exclusive right over EU trade marks, with the result that the condition relating to the existence of the same situation of law appears to be satisfied, which is a matter for the referring court to determine.

32As regards, in the second place, the condition relating to the existence of the same situation of fact, it is apparent from the request for a preliminary ruling that Beverage City & Lifestyle and Beverage City Polska do not belong to the same group, despite the similarity in name and the exclusive distribution agreement signed between them. In addition, the referring court points out that there is no relationship between Beverage City Polska and FE, on the one hand, and, on the other, the ‘anchor defendant’, namely the managing director of Beverage City & Lifestyle, who is domiciled in Germany, even though proceedings have also been brought against that managing director as an infringer.

33Therefore, the referring court seeks to ascertain, in essence, whether, in those circumstances, the existence of an exclusive distribution agreement is sufficient to establish the existence of the same situation of fact for the purpose of applying Article 8(1) of Regulation No 1215/2012.

34In that regard, the objective of the rule of jurisdiction in Article 8(1) of Regulation No 1215/2012 meets, in accordance with recitals 16 and 21 of that regulation, the wish to facilitate the sound administration of justice, to minimise the possibility of concurrent proceedings and thus to avoid irreconcilable outcomes if cases are decided separately (see, by analogy, judgment of 12 July 2012, Solvay, C‑616/10, EU:C:2012:445, paragraph 19).

35That rule of special jurisdiction, because it derogates from the principle set out in Article 4 of Regulation No 1215/2012 that jurisdiction be based on the defendant’s domicile, must be given a strict interpretation that does not go beyond the cases expressly envisaged by that regulation (see, to that effect, judgment of 12 July 2012, Solvay, C‑616/10, EU:C:2012:445, paragraph 21).

36In that regard, the Court has held that, in order to assess whether there is a connection between the various claims brought before it, it is for the national court to take into account, inter alia, the fact that a number of companies established in different Member States are each separately accused of the same acts of infringement with respect to the same goods (see, to that effect, judgment of 12 July 2012, Solvay, C‑616/10, EU:C:2012:445, paragraph 29).

37As the Advocate General observed, in essence, in points 48 and 60 to 65 of his Opinion, the existence of a connection between the claims concerned relates primarily to the relationship between all the acts of infringement committed rather than to the organisational or capital connections between the companies concerned. Similarly, in order to establish the existence of the same situation of fact, particular attention should also be paid to the nature of the contractual relationship between the customer and the supplier.

38In the present case, the referring court has pointed out that Beverage City & Lifestyle was connected to Beverage City Polska by an agreement for the exclusive distribution of the energy drink ‘Diamant Vogue’ in Germany. That exclusive contractual relationship between those two companies may make it more foreseeable that the acts of infringement of which they are accused may be regarded as concerning the same situation of fact, capable of resulting in a single court having jurisdiction to rule on the claims brought against all of the actors who committed those acts.

39Furthermore, it is apparent both from the documents submitted to the Court and from the answers given by the parties to the main proceedings to the questions put at the hearing that the close cooperation between the companies was also demonstrated through the operation of two websites the domains of which belong to only one of the co-defendants, through which, by references between those sites, the goods at issue in the main proceedings were sold.

40That fact might reinforce the presumption of the existence of a connection between the infringement claims brought by Advance Magazine Publishers, but might also demonstrate the foreseeability of liability for alleged acts of infringement having the same origin.

41Consequently, a finding by a national court that the claims brought before it are directed against different actors who have each contributed to the same infringement of an EU trade mark in a chain of infringements may give grounds for finding that the condition relating to the existence of the same situation of fact appears to be satisfied as regards the jurisdiction of that court to rule on actions brought against different co-defendants relating to the same acts of infringement concerning the same EU trade mark, on the basis of Article 8(1) of Regulation No 1215/2012.

42It will therefore be for the referring court to assess, having regard to all of the relevant facts of the case before it, whether the same situation of law and fact exists with regard to the claims against the different defendants.

43The fact remains that the rule laid down in Article 8(1) of Regulation No 1215/2012 cannot be interpreted as allowing an applicant to make a claim against a number of defendants for the sole purpose of removing one of them from the jurisdiction of the courts of the State in which that defendant is domiciled and, thus, of circumventing the rule of jurisdiction contained in that provision by artificially creating or maintaining the conditions for the application of that provision (see, to that effect, judgment of 21 May 2015, CDC Hydrogen Peroxide, C‑352/13, EU:C:2015:335, paragraphs 27 to 29 and the case-law cited).

44Nevertheless, as the Court has previously held, the possibility that an applicant could bring a claim against a number of defendants for the sole purpose of ousting the jurisdiction of the courts of the State in which one of the defendants is domiciled will be ruled out where there is a close connection between the claims brought against each of the defendants when the proceedings are instituted, that is to say, where it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings (see, to that effect, judgment of 11 October 2007, Freeport, C‑98/06, EU:C:2007:595, paragraphs 52 to 54).

45It is therefore for the court seised to satisfy itself that the claims brought against the sole co-defendant whose domicile gives rise to the jurisdiction of the court seised are not intended artificially to satisfy the conditions for the application of Article 8(1) of Regulation No 1215/2012.

46In the light of the foregoing considerations, the answer to the question referred for a preliminary ruling is that Article 8(1) of Regulation No 1215/2012 must be interpreted as meaning that a number of defendants, domiciled in different Member States, may be sued in the courts for the place where one of them is domiciled before which, in the context of an infringement action, claims have been brought against all of those defendants by the proprietor of an EU trade mark where they are each accused of having committed a materially identical infringement of that trade mark and they are connected by an exclusive distribution agreement.

Costs

47Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the referring court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.

Operative part

On those grounds, the Court (Fifth Chamber) hereby rules: Article 8(1) of Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial mattersmust be interpreted as meaning that a number of defendants, domiciled in different Member States, may be sued in the courts for the place where one of them is domiciled before which, in the context of an infringement action, claims have been brought against all of those defendants by the proprietor of an EU trade mark where they are each accused of having committed a materially identical infringement of that trade mark and they are connected by an exclusive distribution agreement.