Editor's note: 2008 years, An American enterprise Taser International With a Romanian company Gate4 Sign a non-exclusive distribution contract. In accordance with the contract, Gate4 It should be related to what it owns in Romania Taser International All trademark rights or trademark application rights are transferred to Taser International all. Gate4 Refuse to perform the above contractual obligations. Read the details below!

[background] 2008 years, An American enterprise Taser International With a Romanian company Gate4 Sign a non-exclusive distribution contract. In accordance with the contract, Gate4 It should be related to what it owns in Romania Taser International All trademark rights or trademark application rights are transferred to Taser International all. Gate4 Refuse to perform the above contractual obligations. Although the contract stipulates that the court of jurisdiction over the dispute is an American court, Taser International The company eventually moved to Bucharest (Romania) A suit was filed in district court. The defendant appeared in court and did not challenge jurisdiction in the Romanian court. After trial, The court of first instance upheld the plaintiff's cause of action, Judge the defendant to perform the contractual obligation of transferring the trademark right. The second trial upheld the verdict of the first instance. Gate4 The company filed a complaint with Romania's Supreme Court of Justice. The Supreme Court held that although the parties had not contested the question of jurisdiction, However, a contract clause relating to jurisdiction shall be an applicable clause. Therefore, The Supreme Court decided to stay the proceedings, And asked the European Court of Justice (European Court of Justice) Made a preliminary ruling on three issues in the case. The first question is this, Although the terms of the dispute contract have clearly stated that the dispute jurisdiction court, Whether the hearing court in this case can comply with "Council of the European Union on civil and commercial jurisdiction, Rules for the recognition and enforcement of judgments (The first 44/2001 No) " (Hereinafter referred to as "Brussels I regulation" ) The first 24 article, That is, the revised "European Parliament and Council of the European Union on civil and commercial jurisdiction, Rules for the recognition and enforcement of judgments (The first 1215/2012 No) " (Hereinafter referred to as "Brussels I Amendment to ordinance" ) The first 26 The provisions of the article obtain implied jurisdiction? If the answer to the first question is yes, So the second question, And also closely related to intellectual property, Which law shall apply in this case: The obligation to transfer the relevant trademark right stipulated in the contract belongs to the real right category, In accordance with "Brussels I regulation" The first 22. 4 article ( "Brussels I Amendment to ordinance" The first 24. 4 article) Special clause, The court of the place where the trademark right is registered shall exercise exclusive jurisdiction; If the obligation to transfer the relevant trademark rights stipulated in the contract is required to be performed, it is an ordinary contractual obligation, Then it should apply "Brussels I regulation" General terms? Finally, The third question is this, In accordance with "Brussels I regulation" The first 24 article ( "Brussels I Amendment to ordinance" The first 26 article) Stipulation of, If the defendant appears in court and does not raise a jurisdictional objection, Whether the receiving court can no longer declare ex officio its absence of jurisdiction on its own initiative?

[conclusion] The European Court of Justice follows its decision in 2014 years 9 month 11 Japanese pair "CCP Vienna Insurance Group" (Case number: C-112/09) The principle set forth in the decision is correct "Brussels I regulation" The first 24 Article is interpreted broadly: The rules of implied jurisdiction are general rules, Shall apply to all general circumstances except those exceptions expressly provided for in this article, The provision of jurisdiction by a third party national court is not an exception to the provisions of this Article. Therefore, For the first and third questions in this case, The European Court of Justice said yes. however, To my surprise, The ECJ did not answer the second question from the court of Cassation in the case, The reason is whether in accordance with "Brussels I regulation" The first 22. 4 Article or regulation 24 Provision of article, The Romanian courts have jurisdiction over the case.

[comment] There are two points worth discussing in this ruling. On one hand, The ruling specified that, Even if the contract between the parties expressly provides that a third party shall have jurisdiction over the dispute under this contract, Courts of member States may still have jurisdiction by virtue of the provisions of implied jurisdiction in international justice. Therefore, The case shall apply "Brussels I regulation" (It should be noted that, If the parties in this case agree to a Mexican court, Relevant jurisdictional disputes should be complied with 2005 years "Alternative court agreement (The Hague) convention" Stipulation of, Rather than "Brussels I regulation" ) , (postnatal) Implied jurisdictional superiority (It was agreed in advance) Express jurisdiction, Regardless of where the defendant is located (In this case, for example, the court where the defendant is located is chosen) Instead, he chose the court of hearing, It does not matter whether the competent court under the contract is a national court of a member state or a third party. however, On the other hand, The verdict in this case is controversial. The European Court of Justice missed a golden opportunity to confirm the scope of the norms governing exclusive jurisdiction over intellectual property disputes. Regrettably, From the judge (Advocate General, Assistant judge) Szpunar Nor can we get more information from the legal opinion written by Mr, As requested by the presiding officer, The European Court of Justice decided not to express an opinion on the issue in its ruling. The reason given by the European Court of Justice: The Romanian courts have jurisdiction in both cases, There is therefore no need to rule on this issue. But in my opinion, The ECJ's reasoning was wrong, There are two reasons. First of all, ( "Brussels I regulation" , Translator's note) The first 22 article (The court where the rights are registered has exclusive jurisdiction) Only international jurisdiction is provided for, And control 24 article (The court of the member state in which the defendant appears has single jurisdiction) It involves both international jurisdiction and jurisdiction within the domain of a State. secondly, But more importantly, Selective application control 22 Article or regulation 24 The result of the article is different. On one hand, The rule of exclusive jurisdiction applies only in expressly prescribed circumstances, And this rule is superior to the express agreement or implied choice of the parties, The accepting court shall take the initiative to confirm, ex officio, whether it has jurisdiction ( "Brussels I regulation" The first 25 article, "Brussels I Amendment to ordinance" The first 27 article) , The fact that it has jurisdiction, It is the basis for the recognition and enforcement of the judgment of the case ( "Brussels I regulation" The first 33. 2 article, "Brussels I Amendment to ordinance" The first 45. 1 article e (ii) item) . On the other hand, If the implied jurisdiction rule applies, The implied selection of a single court for jurisdiction (Different from exclusive jurisdiction) Exceptions and nuances may arise, The general principle is, Only if the defendant is a member of the European Union, It is the duty of the receiving court to determine whether it has jurisdiction ( "Brussels I regulation" The first 26 article, "Brussels I Amendment to ordinance" The first 28 article) , And the non-jurisdictional decisions made in a given situation will be recognized and enforced by other member states. Therefore, I think, The European Court of Justice should decide "Brussels I regulation" The first 22. 4 Article to limit interpretation, Answer the second question raised by the court accepting the case: Limit the exclusive jurisdiction of the courts of the Member State of registration to issues relating to registration, And shall not extend to questions relating to contractual obligations, For example, in this case, the performance of the trademark right transfer obligation.

compile: Liu Dan, The source of Aisabri Legal Counsel: Esabaril (ELZABURU) Intellectual property rights