HomeInsightsAdvocate General opines on jurisdiction in EU trade mark infringement proceedings where goods sold online

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The first claimant, AMS Neve Ltd, is a UK company that manufactures and sells audio equipment and, via one of the directors and another company, the exclusive licensee of a EU trade mark and two UK trade marks.

The first defendant, Heritage Audio SL, is a Spanish company that sells audio equipment.

In October 2015, AMS Neve issued trade mark infringement proceedings against Heritage in the UK claiming that Heritage had offered for sale to consumers in the UK imitations of AMS Neve products bearing, or referring to, signs that were identical or similar to the EU trade mark and the UK trade marks.

The IPEC held that it had jurisdiction to decide the claims relating to the UK trade marks. It also held that, although Heritage was established in Spain, it could be sued, under Article 7(2) of the Recast Brussels Regulation (1215/2012/EU), in the courts of the place where the damage resulting from the tortious acts had occurred and, in the case of the UK trade marks, the place where the damage had occurred was the place where the rights subsisted.

However, the IPEC held that it did not have jurisdiction over infringement relating to the EU trade mark. It found that only the courts of the Member State in which territory Heritage had put the signs in question on the website, or had taken decisions to that effect, had jurisdiction, under Article 97(5) of the Trade Mark Regulation (207/2009/EC). Article 97(5) provides that infringement proceedings can be brought “in the courts of the Member State in which the act of infringement has been committed or threatened”.

AMS Neve appealed to the Court of Appeal, which referred three questions to the CJEU.

The first question asked whether the fact that a defendant, established and domiciled in Member State A, has taken steps in the territory of that Member State to advertise and offer for sale goods under a sign which is identical to a EU trade mark on a website targeted at traders and consumers in Member State B is sufficient to establish the jurisdiction of the courts of Member State B to hear the infringement proceedings on the basis of Article 97(5) of the Trade Mark Regulation (207/2009/EC). If so, it asked which criteria should be applied to establish the jurisdiction of the courts of Member State B.

Advocate General Szpunar opined that under Article 97(5), the courts of a Member State in which consumers have been targeted by the offer for sale or advertisement for infringing goods must have jurisdiction to hear EU trade mark infringement proceedings. In other words, the rule that the place where the act of infringement occurred can only be the place where the process of putting the offer for sale was activated, should be disregarded.

As for the criteria necessary to establish jurisdiction, the AG said that the website cannot merely be accessible in the Member State in question. It must be possible, from the website, to identify the public of a Member State (or several Member States) specifically targeted. Factors to consider include: (i) whether the website refers expressly to the public of a particular Member State; (ii) whether the website has a country-specific top-level domain of a particular Member State; (iv) whether prices are given in a national currency; and (v) whether the telephone numbers provided include a national code.

Other less determinative factors include whether the website contains details as to which areas the seller is willing to dispatch goods to, and what language the website is written in.

Accordingly, the AG said that Article 97(5) should be interpreted as meaning that, in circumstances where an undertaking which is established and domiciled in Member State A has taken steps in that territory to advertise and offer for sale goods under a sign identical to an EU trade mark on a website targeted at traders and consumers in Member State B, an EU trade mark court in Member State B has jurisdiction to hear an action for infringement of the EU trade mark, provided that the advertisement and offer target specifically the public in one or more Member States.

As for this particular case, in the AG’s view, there was nothing to indicate that Heritage’s website was specifically targeted at consumers in the UK. Setting out the details of the distributor in the UK on its website was not sufficient in itself to establish the jurisdiction of the UK courts. However, it was for the referring court to decide. (Case C-172/18 AMS Neve Ltd v Heritage Auto SL EU:C:2019:276 (Advocate General Opinion) (28 March 2019) — to access the Opinion in full, go to the curia search form, type in the case number and follow the link).