EUPillar COFRA Holding AG v. Live Nation (Music) UK Limited and Backstreet International Merchandise Limited

Summary

The appellant is a Swiss holding company, seated in Zug, Switzerland and owns, among others, the clothing chain C&A. The appellant is the holder of the international trademark “Download” for clothing, footwear and headwear, valid in the Benelux countries. The first defendant, a UK company seated in London, organises a music festival in England under the name “Download festival”. It brings out merchandising items such as T-shirts, caps and other clothing. These items are available on the festival itself but also on its website, www.downloadfestival.co.uk as well as through the website of the second defendant (www.backstreetmerch.com). The first and second defendant ended their partnership on 31 January 2010. The appellant sued the defendants on 12 August 2009 to obtain a declaration that the defendants effectively violate the exclusive rights of the appellant and to prevent the defendants from further offering clothing material with the “Download” logo subject to a penalty payment of 25,000 EUR per day. The first judge accepted its jurisdiction but dismissed the claim of the appellant on substantive grounds. 1. Jurisdiction The first judge reasoned that: The appellant’s claim is founded on the registration of its trademark in the Benelux, so that the Benelux Convention of 25 February 2005 on Intellectual Property (BCIP) is applicable; Pursuant to Art. 71 Brussels I, the conflict of law rules of the BCIP take precedence over the Brussels I; On the basis of Art. 2.20.1.a BCIP, the Belgian courts have jurisdiction. The Court of Appeal considers that to determine its international jurisdiction, the Court needs to examine the facts and object of the claim as described by the claimant in the summons. The applicant in this case aims to obtain a declaration from the court as to the breach of its intellectual property rights by the defendants and an injunction to prohibit the defendants from selling or offering clothing with the “Download” logo. The object of the claim is the breach of intellectual property rights. This is a tortious claim. The appellant has its seat in Switzerland. The defendants are established in the UK. In casu, the 1988 Lugano Convention is applicable. (The later version of 2007 entered into force in Switzerland on 1 January 2011, after the current proceedings were initiated.) Art. 5(3) Lugano can be interpreted in a manner analogous to Art. 5(3) Brussels I. The event giving rise to the damage is the act of offering via a website in Belgium certain wares marked with the Download sign. The place of this event is located at the place of the server which hosts the website www.downloadfestival.co.uk. It is assumed that this server is located in England, since it has not been proven that this is not the case. The place where the damage occurred is Belgium. This is the place where the goods were delivered and where the interests of the appellant were harmed. The Belgian courts have jurisdiction. 2. Applicable law The appellant argues that the BCIP should be applied. The Court of Appeal, however, decides that the applicable law must be determined according to the law of the forum, ie Belgian law. The European PIL rules are part of Belgian law, in particular Regulation No. 864/2007 (Rome II). Art. 1 Rome II stipulates that this Regulation shall apply, in situations involving a conflict of laws, to non-contractual obligations in civil and commercial matters. Pursuant to Art. 8(1) Rome II, the law applicable to a non-contractual obligation arising from an infringement of an intellectual property right shall be the law of the country for which protection is claimed. The law of the country for which protection is claimed is in this case the whole Benelux, including Belgium. The Court concludes that Belgian law – of which the BCIP is an integral part – is applicable. Short Critique: the Court correctly applies Rome II.