The matter at hand

This case concerns the jurisdiction of EU trade mark courts under Article 97(5) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark to hear claims regarding trade mark infringements through online advertising and offers for sale directed at consumers located in their jurisdiction.

The plaintiff in this case is AMS Neve, a company established in the United Kingdom, which manufactures and sells audio equipment and is exclusively licensed to use an EU trade mark consisting of the figure ‘1073’ for ‘sound studio recording, mixing and processing equipment’ in class 9. The defendant is Heritage Audio, a company established in Spain, accused of infringing the rights to this trade mark by offering for sale audio equipment bearing an identical or similar sign through its website and social media accounts directed at consumers and traders in the UK.

AMS Neve brought infringement proceedings against Heritage Audio in the United Kingdom, taking the view that the jurisdiction of the UK courts to hear the infringement action could be based on Article 97(5) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, which provides that such actions may be brought before the courts of the Member State in which the act of infringement has been committed. AMS Neve took the view that since the relevant offers for sale were directed at UK residents, the infringing acts had been committed in the UK. In the first instance, the Intellectual Property and Enterprise Court denied jurisdiction on this basis, considering that the place where the act of infringement was committed was Spain, where the decision to put the offers for sale online were made and the steps were taken to give effect to that decision.

In appeal, the referring Court of Appeal (England & Wales, Civil Division) disagreed with this interpretation, but had doubts whether it should nevertheless apply the interpretation adopted by the ECJ in Nintendo (C‑24/16 and C‑25/16), according to which the place where the act of infringement was committed within the meaning of Article 8(2) of Rome IIRegulation [EC] of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations is the place where the process of putting the offer for sale online was activated. In this context, the referring court cited the Parfummarken judgment of the German Bundesgerichthof, which held that the interpretation in Nintendo should be transposed to the same concept in Article 97(5) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark.

The judgment of the ECJ

The ECJ recalls that it already held in L’Oréal (C-324/09), regarding the scope of Article 9(2)(b) and (d) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, that acts consisting of online advertising and offering for sale are to be considered “committed in the territory where the consumers or traders to whom that advertising and those offers for sale are directed are located, notwithstanding the fact that the defendant is established elsewhere, that the server of the electronic network that he uses is located elsewhere, or even that the products that are subject of such advertising and offers for sale are located elsewhere” (paragraph 47). The ECJ considers that the intended purpose thereof is to ensure that a third party who directs advertising and offers for sale at EU consumers cannot evade a claim for infringement of an EU trade mark and thereby undermine the effectiveness of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark, by relying on the fact that that advertising and those offers for sale were placed online outside the European Union. The ECJ holds that similarly, it must be ensured that such third party cannot contest the application of Article 97(5) either, by relying on the place where his advertising was placed online in order to exclude the jurisdiction of any court other than the court of that place and the court with jurisdiction over where he is established (paragraph 49). The ECJ considers this would rob Article 97(5) of its effectiveness where online advertising is concerned, adding that it may in many cases prove excessively difficult, or even impossible, for the plaintiff to identify the place where the advertising was placed online.

The ECJ therefore considers it necessary “in order to maintain the effectiveness of the EU legislature’s provision of an alternative forum” to give to the wording ‘Member State in which the act of infringement has been committed’ an interpretation which is consistent with the other provisions of Trade Mark Regulation No 207/2009, in particular Article 9 thereof (paragraph 52).

This leads the ECJ to circle back to L’Oréal (C-324/09) and to conclude that the same principle applies to Article 97(5). Therefore, if the advertising and offers for sale are targeted at consumers or traders situated in the Member State of the court whose jurisdiction is sought and are entirely accessible by them, the courts of that Member State have jurisdiction on the basis of Article 97(5) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark. The ECJ notes that the question of whether the advertising is targeted at consumers or traders within the UK is for the referring court to answer on the basis of the factors given in L’Oréal (C-324/09), such as the details contained in the advertising with respect to the geographical areas where the products at issue were to be delivered (paragraph 56).

The ECJ observes that this interpretation is not invalidated by Nintendo (C-24/16), in which the ECJ held that in the case of online advertising, the wording ‘country in which the act of infringement was committed’ in Article 8(2) of Rome IIRegulation [EC] of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations must be interpreted as referring to the country where the act of activating the process of placing the advertising online was committed. The ECJ notes that the purpose and object of the wording of Article 8(2) Rome IIRegulation [EC] of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations are fundamentally different from that of Article 97(5) Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark. “The need to ensure that only one law is applicable does not exist in the context of rules concerning which court has jurisdiction, such as those contained in [Brussels ICouncil Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters] and in [Trade Mark] Regulation 207/2009, which provide for more than one forum” (paragraph 64).

The ECJ therefore concludes “that the proprietor of an EU trade mark, who considers that his rights have been infringed by the use without his consent, by a third party, of a sign identical to that mark in advertising and offers for sale displayed electronically in relation to products that are identical or similar to the goods for which that mark is registered, may bring an infringement action against that third party before an EU trade mark court of the Member State within which the consumers or traders to whom that advertising and those offers for sale are directed are located, notwithstanding that that third party took decisions and steps in another Member State to bring about that electronic display”.