Infringement of a Union trademark – Where to sue?

|Gert Würtenberger|

According to Article 97 V of the European Union (EU) Trademark Regulation 2017/1001, proceedings in respect of actions and claims connected with infringements of Union trademarks may also be brought before the courts of the Member State in which the act of infringement has been committed or threatened. Exempted from that possibility are actions for declaration of non-infringement of a Union trademark. In its quoted decision the Court had stated that the interpretation of that provision requires, in contrast to Article 7 No 2 of the Brussels-Ia Regulation, an active conduct on the part of the person causing the alleged infringement. In the event of sales and delivery of a counterfeit product in one Member State, followed by a resale by the purchaser in another Member State in which the original seller did not act himself, that criterion was not sufficient to establish the jurisdiction of the EU Trademark Court of the latter Member State to hear an infringement action brought against the initial seller.

In a most recent judgement of 5 September 2019 in case C-172/18 – AMS Neve (see here) in proceedings for preliminary ruling initiated by the Court of Appeal (England & Wales) (Civil Division) the plaintiff filed an action with the Union Trademark’s court in London, claiming that the defendants located in Spain were infringing AMS Neve’s Union trademark. The plaintiff complained that the defendants in the main proceedings had offered for sale to consumers in the United Kingdom imitations of AMS Neve’s products bearing, or referring to, signs that were identical with or similar to the Union trademark and the national trademarks in question. In that respect, they relied on the contents of the website of one of the defendants and of its Facebook and Twitter accounts. Moreover, the plaintiffs could present an invoice issued by one of the defendants to an individual residing in the United Kingdom, supplemented by an exchange of e-mails between the main defendant and a shop in the United Kingdom concerning the potential supply of audio equipment as well as the content of the conversation between a solicitor acting for the claimants in the main proceedings and a representative of the United Kingdom distributor of the goods of the defendants in the main proceedings. The defendants disputed in the main proceedings that they had advertised, offered for sale, sold or supplied any goods in the United Kingdom.

The national first instance court denied jurisdiction with regard to the Union trademark and in so far rejected the plaintiff’s action. Upon the filing of an appeal against the judgment, the Court of Appeal decided to stay the proceedings and to refer questions of jurisdiction to the Court of Justice of the European Union (CJEU) for a preliminary ruling and posed, inter alia, the question whether a Union trademark court in a Member State has jurisdiction to hear a claim for infringement of the Union trademark in respect of advertisements and offers for sale of the goods in that territory.

The CJEU confirms the international jurisdiction of the English courts in the sense of Article 125 V of the Regulation. An act of infringement, as specified in Article 9, is given, inter alia, when any of such acts has been committed in the territory where they can be classified as, for example, advertising or as offers for sale, namely where their commercial content has in fact been made accessible to the consumers and traders to whom it was directed. Whether the result of that advertising and those offers for sale was that, thereafter, the defendant’s products were purchased is, however, irrelevant (Para. 54 of the judgment).

In light of the CJEU’s judgement, it is to be expected that the English Court of Appeal will confirm its jurisdiction, bearing in mind that certain proof had been submitted in infringement proceedings occurred in the United Kingdom which constitute infringing acts as defined by Article 9 of the Regulation.

Posted in Trade mark and tagged , .