Today, the CJEU has restored sanity with regard to taking action against online infringements.

In the case of AMS Neve v Heritage Audio C-172/28 the CJEU has confirmed that EU trade mark owners can bring claims for infringement of an EU trade mark against traders that have advertised or made offers for sale displayed electronically which are directed (targeted) at the public in the country where the brand owner is bringing the court action.

In essence, if the online advert is considered to be directed at e.g UK consumers, the UK courts do have jurisdiction to hear the EU trade mark infringement claim even if the defendants took decisions and steps to bring about that online advert outside of the UK.

The result above ought to be obvious (especially since the CJEU decision of L’Oreal) and most of us thought that was always the case.  But recent CJEU decisions meant the first instance decision of HHJ Hacon in the IPEC found the UK courts did not have jurisdiction over a EU trade mark infringement claim for online advertisements that used the EU trade mark. This was because the defendant was in Spain and the defendant’s acts of publishing the online advertisement and making offers for sale were found to take place in Spain, even though the offers and advertisements were found to be targeting UK consumers. Thus, the acts of infringement were not taking place in the UK according to HHJ Hacon’s interpretation of CJEU jurisprudence.

If you were aware of the first instance decision you have probably been concerned how you would efficiently enforce your EU trade marks against online infringement. Today’s decision, which arose from a reference from the UK, is of critical importance in dealing with trade mark infringement online in Europe and restores what most of us thought was the jurisdictional position regarding online infringement.  For this reason we thought it deserved an urgent case update.

Background

The claimant who is a manufacturer of audio equipment alleged that the defendants, who were domiciled in Spain, were advertising and offering for sale on their website audio equipment bearing a sign ‘1073’ that was confusingly similar to the claimants’ UK and EU trade marks. The defendants brought a jurisdiction challenge in the IPEC in relation to this infringement action.

UK IPEC Findings

HHJ Hacon found that the UK courts had jurisdiction to try the claim in regard to the UK trade marks under the Brussels I Regulation (1215/2012) on the basis that a claimant can bring a claim where the harmful effects of the infringement are felt.

However, HHJ Hacon considered the UK courts did not have jurisdiction for the EU trade marks under the Trade Mark Regulation (207/2009). This was because the Trade Mark Regulation provides that only the courts of the Member State in which the ‘act of infringement has been committed or threatened’ will have jurisdiction. Based on his review of recent CJEU decisions in C-523/10 Wintersteiger AG and Case C-360/12 Coty Germany GmbH he considered the ‘act of infringement’ is limited to the place of the event which gave rise to the damage. Accordingly, since the event of deciding to place the advert and make the offer, and the technical process to put the sign on the website took place in Spain, the Spanish courts had jurisdiction to hear the claim in relation to the EU trade marks.

The claimant appealed this decision to the Court of Appeal who then referred the question to the CJEU. The Court of Appeal recognised the IPEC decision had significant potential to undermine the enforcement of EU trade marks.  In many circumstances involving online infringement no EU member state court would have jurisdiction if the place of the event where the conduct took place was limited to where the steps took place to publish the online advert or where the decision was made.  Infringers could avoid an ‘act of infringement’ under the Trade Mark Regulation by being outside the EU when they made their offer for sale or online advert.

CJEU decision

The CJEU has now held that a court in Member State A will have jurisdiction to hear a trade mark infringement case for an EU trade mark in circumstances where an undertaking established in Member State B has taken steps in Member State B to advertise and offer for sale goods under a sign identical to an EU trade mark on a website targeted at the public of Member State A. The key question relates to whether the online advert is directed atconsumers in Member State A.

The CJEU nonchalantly distinguished its earlier decisions which had troubled HHJ Hacon. It recognised the Trade Mark Regulation gives claimants an alternative choice of where to sue a defendant. Claimants can sue someone in their place of domicile in which the court’s jurisdiction extends to all acts throughout the EU, or a claimant can sue a defendant in the Member State where the acts of infringement occurred or where threatened. Moreover, the CJEU said infringing acts must be held to have been ‘committed’ in the territory where they can be classified as 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.

Implications of the judgment

The CJEU recognised it was important to ensure the jurisdiction of the EU Trade Mark Courts was not limited to the location where the person carrying out those commercial acts set up his website and activated the display of his advertising and offers for sale.

In assessing jurisdiction over online advertisements and offers for sale the key criteria is whether the public of the court considering jurisdiction are the targets of the online advertisement and offers for sale. Traders outside the EU or operating in one Member State but targeting the public of Member State (B) online may be sued in the courts of  Member State (B).

Post-Brexit implications

Like all things, we must consider what this means for Brexit Britain. The EU Trade Mark Regulation will no longer be law, and the Brussels Regulation will also no longer apply.

In the event of no deal, the UK will revert to its common law jurisdiction rules for any cases starting after exit day. This essentially means that, in circumstances such as these where the defendant does not have a UK presence, claimants will need to apply to the UK court to serve proceedings on EU defendants. The courts will then decide if the UK is the appropriate jurisdiction to resolve the dispute. In all likelihood, in circumstances such as these, the UK courts would consider the UK to be the appropriate forum for decisions of infringement of UK trade marks where the foreign company is targeting the UK public and the damage is suffered in the UK.

The UK courts traditionally have been liberal in extending jurisdiction and undoubtedly online advertisements or offers for sale that target UK consumers will continue to be considered as acts of infringement within the jurisdiction of UK courts under the common law principles.