by Frank Tyra
The Court of Justice of the European Union (CJEU), in its judgment of 5 September 2019 in Case C-172/18 (see here), clarified that the EU legislators created an alternative place of jurisdiction. This allows the proprietors of European Union trademarks (EUTMs) to file an infringement action either with the EUTM Court (national courts that have been designated by the respective Member State to deal with disputes related to EUTMs) with jurisdiction for the place of domicile and/or establishment of the infringer or with the court of the (sovereign) territory in which the act of infringement has been committed or threatened. By this decision, the trademark owner also determines the local jurisdiction of the court seised. If the action is brought in the EU Member State in which the infringer resides or is established, it will potentially have effect for all infringements committed throughout the Union. In contrast thereto, the action must be limited to activities that occurred in that Member State .
This alternative place of jurisdiction allows for the filing of targeted actions, whereby each action deals with the infringing acts committed in the territory of a single EU Member State. Therefore, an infringement action could be brought before an EUTM Court of such a Member State in which the consumers or traders are located that are targeted by an infringing online advertisement or an infringing online sales offer also in cases where the infringer has taken the decisions and measures concerning the infringing electronic ad in another Member State.
This is of particular interest for the proprietors of EUTM that are domiciled in Germany, because in Germany the Federal Supreme Court (BGH) argued in its “Parfummarken” judgment (I ZR 164/16 – Parfummarken – see here) that the international jurisdiction of a German court could not be justified with the argument that Germany was the place where the damage resulting from a trademark infringement actually occurred. According to the relevant provision of the European Union Trademark Regulation [EUTMR](formerly Article 97(5) EUTMR, now Article 125(5) EUTMR), the connecting factor to determine international jurisdiction was the EU Member State “in which an act of infringement is committed or threatened”. This would indicate an active conduct on the part of the infringer and aim at the Member State in which the incident underlying the alleged infringement occurred or may realistically occur, and not at the Member State in which the infringement unfolded its effect. If an economic operator offered goods for sale on its website aimed at customers located in other European Union Member States, in violation of the rights vested in an EUTM , and if these goods could be viewed on screen and ordered via the website, the location where the Internet publication was launched would be decisive for determining the place of international jurisdiction and not the location where the Internet page could be accessed.
The CJEU indirectly rejected this opinion by confirming, in the end, the doubts which the Referring Court – the Civil Division of the Court of Appeal (England & Wales) of the United Kingdom – had voiced in relation to the BGH judgment. It would in any case be necessary to prevent an infringer from circumnavigating the enforcement of the EUTMR, as such behaviour would undermine the effective rights to be derived from a Union trademark, as set forth in the Regulation, if it could be claimed that his or her infringing online advertising and online sales offers were posted on the Internet outside of the Union. Accordingly, it would be necessary to avoid that an infringer could object to the EUTMR jurisdictional provisions, thereby impairing their practical effectiveness, by relying on the location where the advertisement and Internet offers were launched in order to exclude the jurisdiction of a court other than that particular location and the place of his or her establishment.
However, the choice enjoyed by the proprietor of the EUTM cannot be interpreted to mean that he or she can bring several actions side by side pertaining to the same acts of infringement, on the one hand based on jurisdiction determined by residence and on the other hand on jurisdiction determined by the relevant market place. It is merely an alternative option to jurisdiction determined by residence or establishment. Because of the possibility of filing targeted actions, whereby each action deals with the infringing activities committed in the (sovereign) territory of a single Member State, it would be possible that several infringement actions involving the same parties concerned the use of the same sign, but not the same (sovereign) territory. In these circumstances the actions would not have the same object and would therefore not be subject to the lis pendens rules. For this reason, the courts of different Member States seised could not issue divergent judgments.
Frank Tyra – Lawyer in Munich, Germany
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