International Jurisdiction in IPR disputes

Submitted by leslynowak on Thu, 10/17/2019 - 12:18
 
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Where can I file in case of trademark infringement?

At the beginning of September, the Court of Justice of the European Union (CJEU) published its first judgment regarding international jurisdiction and online EU trademark infringement. Although this judgment refers to EU trademarks exclusively, I wanted to make the connection with previous judgments from the Court regarding EU and national trademark infringement to help our readers understand what to expect when facing infringements of both categories of trademarks.

It all comes to the interpretation of the rules of international jurisdiction contained in Brussels I Regulation (now recast). According to this, the general rule in case of dispute between individuals from different Member States is that a defendant should be sued in the Member State where it is domiciled. However, Brussels I contains a number of alternative grounds of jurisdiction, one of them applicable to IPR infringement “a person domiciled in a Member State may be sued in another Member State, in matters relating to tort, delict or quasi delict, in the courts for the place where the harmful event occurred or may occur”. These should be understood as the place where the damage occurs and the place where the event that caused the damage occurred.

How are these rules translated into practice?

Previous to 2019, the CJEU had the opportunity to clarify the question in two cases.

Back in 2012, in Wintersteiger, the CJEU had the opportunity to clarify in case of online infringement of national trademarks. Wintersteiger is a well-established Austrian manufacturer of accessories and servicing tools for skis and snowboards. Products 4U, a German business, purchased “Wintersteiger” as one of the keywords for advertising on a German search engine, that was also accessible from Austria. Therefore, whenever a consumer would type “Wintersteiger”, the first site to appear as a suggestion would be the one of Products4U.

Wintersteiger bring action before the Austrian courts on the basis that the use of said keyword infringed a trademark that is registered in Austria. The Austrian Supreme court turned to the CJEU to clarify whether or not Austrian courts could have jurisdiction in this case.

The CJEU conferred jurisdiction on either the courts of the Member State of registration of the trade mark, or the courts of the Member State of the establishment of the advertiser

Then in 2014, in Coty Germany, the CJEU addressed the case of offline infringements of EU trademarks.

First of all, this case is slightly different as the one presented before. Indeed, here we are facing the infringement of an EU trademark. Therefore, the rules of the Brussels I Regulation are displaced by the more specific rules contained in the relevant instrument, here, Art 125(1) of EU Trademark Regulation 2017/1001. proceedings in respect of actions and claims referred to in article 124 (infringement and validity) may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened

Here Coty Germany GmbH, a German based Company, is the owner of a 3D EU trademark and commercializes a woman’s perfume in this bottle in Germany. When products infringing its 3D EU trademark were introduced in the German market, Coty went after First Note Perfumes, a Belgian company producer of the infringing products, for enabling a third party to commit trademark infringement and unfair competition. First Note was not directly responsible for introducing the products in the German market, they sold it to a third party that would then bring them and sold them in Germany.

The question here is can Coty bring action before the German courts against a Belgium company that has not acted itself directly in Germany but through and intermediary?

The Court established that the concept of “Member State in which the act of infringement has been committed” does not allow Coty to bring action against the original seller (First Note) in Germany, because he did not himself act in the Member State where the court seized is situated. As you can see, this excludes the possibility to file for EU trademark infringement in the Member State where the damage occurs. The possibilities are, therefore, more limited than under Brussels I.

Fast forward to 2019, in AMS Neve, the Court is now giving its interpretation in the case of online EU trademark infringement. As in the previous case, given that it is an EU trademark, Brussels I (recast) does not apply here, we have to apply the rules of jurisdiction established under EUTMR. In this case, the holder of the EU trademark is located in the UK, while the alleged infringer is located in Spain. The Spanish infringer had allegedly offered imitations of the protected products to consumers in the UK through its website. Here the CJEU considered that “place of infringement” should be understood as the Member State within which the consumers or trades to whom that advertising and those offers for sale are directed are located.

Moral of the stories

Regarding the applicable legal instrument:

  • Jurisdiction for infringements of IP rights that are protected through national law is governed by the general rule in Art 7(2) of the Brussels I Regulation.
  • Jurisdiction for infringements of IP rights that are protected under ‘uniform’ EU instruments, the rules of the Brussels I Regulation are displaced by the more specific rules contained in the relevant instrument: now Art 125(1) of the EU Trademark Regulation 2017/1001
  • Regarding the validity or registration of national patents, trademarks, designs or similar required to be deposited or registered the courts of the Member State in which the IPR is registered or the application has been filed will have exclusive jurisdiction
  • Regarding the validity or registration of EU Trademarks, EU Trademark Courts will have exclusive jurisdiction.

Jurisdiction wise

National IPR

EU IPR

Online infringement

  • Domicile of the infringer
  • Place of the causal event: MS where the infringer has its establishment
  • Place of the damage: MS of registration of the IPR
  • Domicile of the infringer
  • Place of the infringing or threatening act: Member State targeted through advertising and sales offers + place where the infringing act is carried out.

Offline infringement

  • Domicile of the infringer
  • Place of the causal event
  • Place of the damage
  • Domicile of the infringer
  • Place of the infringing or threatening act: MS where the infringer has its establishment

 

 

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