When my tweets on the CJEU are not followed quickly by a blog post, assume I got snowed under. Or that other developments require more immediate analysis. Taser, Case C-175/15, is easily dismissed perhaps as not all that stunning or shocking (puns abound), yet as often, it is worthwhile highlighting what the case does not answer, rather than what it did elucidate.
Taser International, whose seat is in the United States, entered into two non-exclusive distribution agreements with Gate 4. Under those agreements, Gate 4 and its administrator, Mr Anastasiu, undertook to assign to the other contracting party the Taser International trade marks which they had registered, or for which they had applied for registration, in Romania.
Following Gate 4’s and Mr Anastasiu’s refusal to fulfil that contractual obligation, Taser International brought an action before the District Court, Bucharest. Regardless of the existence in those contracts of clauses conferring jurisdiction on a court situated in the US, Gate 4 and Mr Anastasiu entered an appearance before the Romanian court without challenging its jurisdiction. The Court ordered them to undertake all the formalities necessary for the registration of the assignment.
The appeals court seeks clarification as to whether the Brussels I Regulation is applicable to the dispute before it, since the parties elected, for the resolution of their disputes, the courts of a third country. The referring court considers that such a clause conferring jurisdiction on a third country may, for this reason alone, preclude the tacit prorogation of jurisdiction under Article 24 (Article 26 in the Brussels I Recast).
On the assumption, however, that that latter rule is applicable, the referring court seeks to ascertain whether it should, nevertheless, decline jurisdiction on another ground. It also queried whether the exclusive jurisdictional rules of Article 22 are applicable: does a dispute concerning an obligation to assign a trade mark, likely to result in a registration under national law, fall within paragraph 4 of that article.
The CJEU firstly recalled its finding in C-111/09 CPP Vienna Insurance Group: choice of court made per Article 23 (now Article 25) Brussels I, can be overruled by voluntary appearance. The latter in that case simply acts as an amended choice of court. In Taser (at 24) the court now adds that this applies also if that initial choice of court was made ex-EU. The deliberate, later choice, remains a deliberate choice. The Court makes no reference to discussions e.g. in the context of Gothaer, whether the Brussels I Regulation at all should be concerned with choice of court ex-EU or should be entirely indifferent. Arguably, in the Recast Regulation, there is consideration for choice of court ex-EU, in particular in recital 24 combined with Article 33.
Intellectual property lawyers will be disappointed with the Court’s answer to the issue of whether trade mark assignment falls within Article 22(4) [now 24(4)]: Romanian courts in any event had jurisdiction. (at 29).
Plenty left open, therefore. Geert.
(Handbook of) European private international law, 2nd ed. 2016, chapter 2, heading 188.8.131.52, heading 2.2.7 .