EUPillar Christian Louboutin v. Van Dalen Footwear BV

Summary

The French designer Christian Louboutin is the holder of a Benelux trademark nr. 0874489. The use of a particular shade of red on the soles of shoes is thereby protected. The defendant is a company governed by Dutch law, Van Dalen Footwear. Mr. Louboutin noticed an infringement of its patent in “the district of Brussels”. On 7 August 2013, Mr. Louboutin initiated summary proceedings before the President of the Commercial Court of Brussels. The first judge dismissed Mr. Louboutin’s claim. He decided that the trademark was invalid on the basis of Art. 2.1(2) of the Benelux Convention on Intellectual Property. Mr. Louboutin appealed. On appeal, the respondent contests the international jurisdiction of the Belgian courts. The Court of Appeal considers first of all that it isn’t important to know whether it is the Brussels I Regulation or the Benelux Convention on Intellectual Property that applies to the issue of jurisdiction (the case at hand falling within the material, temporal and formal scope of both), since both would lead to the same outcome. In case C-144/12, Goldbet Sportwetten v. Massimo Sperindeo, the ECJ decided that “It is admittedly apparent from Case 150/80 Elefanten Schuh [1981] ECR 1671, paragraph 16, in relation to the interpretation of Article 18 of the Convention of 27 September 1968 on jurisdiction and the enforcement of judgments in civil and commercial matters, a provision which in essence is identical to Article 24 of Regulation No 44/2001, that the challenge to jurisdiction may not occur after the making of the submissions which under national procedural law are considered to be the first defence addressed to the court seised.” Art. 24 Brussels I stipulates that “Apart from jurisdiction derived from other provisions of this Regulation, a court of a Member State before which a defendant enters an appearance shall have jurisdiction. This rule shall not apply where appearance was entered to contest the jurisdiction, or where another court has exclusive jurisdiction by virtue of Article 22.” From case C-111/09, CPP Vienna Insurance Group v. Michal Bilas, it follows that “in the situations which are not expressly included in the exceptions provided for in the second sentence of Article [24], the general rule on the tacit prorogation of jurisdiction applies.” Art. 22 provides for exclusive jurisdiction in disputes on the validity or registration of trademarks, but the case at hand is concerned with infringement proceedings. The Court of Appeal concludes that the respondent appeared before the first judge without contesting the international jurisdiction. It made written submissions to the court and presented its standpoint on the substance of the case. Thus, the respondent tacitly accepted the international jurisdiction of the Belgian courts. It can no longer raise objections as to jurisdiction on appeal. (cf. Cass. 2 januari 2014, C.22.0463.n/4, Wibra België e.a. v. VF international SAGL) Short critique: the Court correctly applies Brussels I.