Trading platforms for marketing are tools that are gaining more and more importance. For this reason, it is quite obvious why infringements of rights such in designs and trademarks very often occur through promotion and distribution activities via platforms. As the same are accessible worldwide whereas the placing of infringing goods may occur somewhere else than in the country where the platform is installed or where the owner of the platform has his place of business, the determination of international jurisdiction in cases of online infringement is of essence to effectively combat infringement of industrial property rights.
In a judgment dated 5 September 2019 (Case C-172/18 – AMS Neve) the Court of Justice of the European Union (CJEU) gave further guidance on the determination of international jurisdiction in cases of infringement of Union trademarks through online marketing. The judgment was caused by a referral of the Court of Appeal (England and Wales). The national court had to determine its international jurisdiction based on the situation that the defendant was established and domiciled in Spain, but advertised and offered for sale trademark-infringing goods on a website that addressed traders and consumers in the UK. The question was whether the Union trademark court in the UK would have jurisdiction with regard to a claim for infringement of a Union trademark by a Defendant located in another Member State.
As far as infringements of Union trademarks are concerned, Article 125 of the EU Trademark Regulation 2017/1001 (EUTMR) determines which Union trademark court may be competent.
According to Article 125 (5) EUTMR (previously regulated in Article 97 (5) of Regulation No. 207/2009), proceedings in respect of actions and claims related to trademark infringement, with the exception of actions for declaration of non-infringement of a trademark, may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened. It opens – besides the place of jurisdiction where the infringement takes effect (Art. 125 (2)) and where the infringer is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment (Art. 125 (1)) – an additional place of jurisdiction where the infringement takes its origin.
The CJEU was called upon by the English Court to interpret the expression “Member State in which the act of infringement has been committed” in the sense of Article 125 (5) EUTMR. The Court emphasizes that the wording refers to the place where the person carrying out infringing commercial acts took decisions and technical measures to activate the display of his advertising and offers for sale on a website (para. 51) and not where he set up his website and activated the same. Otherwise, parties established within the European Union that are committing an infringement, are operating electronically and seeking to prevent the proprietors of infringed EU marks from resorting to an alternative forum would have to do no more than ensure that the territory where the advertising and offers for sale were placed online was the same territory as that where those parties are established. In that way, the provision would, in the event that the advertising and the offers for sale are directed to consumers of other Member States, be deprived of any scope that would be constituting an alternative to that of the rule on jurisdiction laid down Article 125 (1) EUTMR, namely the location where the Defendant is domiciled or in which he has an establishment (para. 50).
The CJEU expressly maintains the criterion “active conduct” as the part of person causing the infringement as already outlined in the Coty-Decision (C-360/12, EU:C:2014:1318, para. 34, 37 and 38) whereas the effect of the infringement committed by the original seller was irrelevant for determining the place of jurisdiction in the sense of Article 125 (5) EUTMR .
This decision completes the case law of the CJEU on matters of international jurisdiction relating to online infringements of national trademarks (C-523/10 – Wintersteiger) and offline infringements of EU trademarks (C-360/12 – Coty Germany). A difference in international jurisdiction in cases of infringement of a national trademark and of Union trademarks remains with regard to online offers. While with regard to Union trademarks it is sufficient that the contents of a website may be retrieved in the country an infringement action is intended to be filed, international jurisdiction according to Article 7 (2) Brussels I a Regulation requires “active conduct”.