Territorial jurisdiction in trademark law

The European Union has a system in place to protect the intellectual property rights of its citizens, however, litigation does arise on this matter from time to time. In this case, it is necessary to know the procedure to follow in order to be able to protect your rights. The first question that arises is: which is the competent court?

By a judgment of 5 September 2019 , the Court of Justice of the European Union considered that a Union trade mark which was injured by the use of a sign identical to its trademark in advertisements and online sales offers of identical products may bring an action for infringement of its trademark before the court of the EU Member State in which the consumers concerned are located through advertisements and offers for the online sale of products.

The defendant company accepts orders from any Member State of the Union

In the present case, two English companies, holders of an EU trademark, brought an action for infringement of their trademark against a Spanish company in the UK courts.

The defendant is accused of having sold online to consumers in the United Kingdom products bearing a sign identical to their trade mark registered in the European Union and of having advertised these products which were almost identical to those of the applicants’ mark. In support of their request, the applicants produced the contents of the website of the defendant mark and emphasized that these offers are drafted in English and that a “where to buy” section lists distributors established in various countries, therefore some in the UK. Furthermore, it is clear from the general conditions of sale that the defendant company accepts orders from any Member State of the Union.

By a judgment of October 18, 2016, the court of first instance declared itself incompetent. It considers that an action aimed at protecting a European Union trade mark against a third party who has used signs identical or similar to that mark in advertisements and offers for sale on a website or on social media platforms is within the jurisdiction of the courts of the place where the third party has made the decision to make these advertisements and offer for sale these products on this site or on these platforms and has made the terms of implementation of this decision. In the present case, according to this reasoning, the dispute falls within the jurisdiction of the courts of the Kingdom of Spain.

The applicants appealed against this judgment. The referring court took the decision to stay the proceedings to question the CJEU on the interpretation of Article 97, paragraph 5, of regulation n ° 207/2009 (replaced by regulation 2017/1001, article 125, paragraph 5) which provides that” The proceedings resulting from actions and requests referred to in Article 96, with the exception of actions for a declaration of non-infringement of a Community trade mark, may also be brought before the courts of the Member State in whose territory the an act of counterfeiting has been committed or threatens to be committed or in the territory of which an act referred to in Article 9, paragraph 3, second sentence, has been committed. “Actions and requests referred to in Articles 96 refer in particular to actions for infringement.

The preliminary question put by the Court of Appeal to the CJEU is as follows: “ When a company, established and having its registered office in the territory of Member State A, has taken measures in this territory to advertise and offer for sale products bearing a sign identical to a European Union trade mark through a website aimed at both professionals and consumers in Member State B, a court European Union trade marks of Member State B have jurisdiction to rule on an action for infringement of the European Union trade mark on account of this advertising and this offer for sale of the products made on the territory of Member State B? “More simply, the question arises as to whether the court of the territory in which the infringing acts were carried outof advertising and offers for the sale of online products contrary to the law of an EU trademark is competent to rule on this dispute even though the head office of the infringing company is established in the territory of another State member?

“ In whose territory the infringement has been committed or threatens to be committed “

European judges answer this question by interpreting Article 97, paragraph 5 of Regulation 207/2009. The Court states that in principle, Article 97 (1) of that regulation implies that when the defendant has his domicile in a Member State, the applicant who has had his rights infringed by the use of a sign identical to his trade mark in advertisements and offers for sale online for products identical or similar to those produced by the said mark takes its action in the courts of the territory of the defendant. In the present case, the registered office of the defendant being located in Spain, the competent courts should be those of Spanish territory.

Nevertheless, paragraph 5 of Article 97 of the Community Trade Mark Regulation states that the applicant may “ also ” bring his action before the courts of the Member State “ in whose territory the act of counterfeiting has been committed or is threatening to be committed ”. Despite this, Article 98 provides that the Community Court which statutes on the basis of paragraph 5 of Article 97 will only have jurisdiction to rule on acts committed in the territory of the Member State in which it is located. On the contrary, a court whose jurisdiction is established as the defendant’s court is competent to rule on acts of counterfeiting committed in the territory of any member state.

Therefore, this means that if the applicants decide to bring their action to a court in the United Kingdom, that court will only have jurisdiction to adjudicate on the facts committed in the United Kingdom. On the contrary, if the action is brought in Spain, the court will be able to rule on all acts of counterfeiting committed throughout the territory of the Union.

Finally, the European judges answer the question of the British court by affirming that the owner of a European Union mark, who considers himself aggrieved by the use without his consent, by a third party, of an identical sign to that mark in advertisements and offers for sale displayed electronically for products identical or similar to those for which the said mark is registered, may bring an action for infringement against that third party in a Union Trademark Court European Union of the Member State in whose territory consumers or professionals targeted by these advertisements or offers for sale are located, notwithstanding the fact that said third party has taken the decisions and measures for this electronic display in another Member state.

On the other hand, in the event of choice of this court where the acts were committed, this one is competent only to rule on the only acts of counterfeiting committed on its territory to the exclusion of the acts of counterfeiting likely to be committed. in other countries of the European Union.

But the owner of a European Union trade mark, rather than designating the court in which the defendant has its registered office to try acts of infringement committed throughout the European Union, can also decide to initiate infringement actions before the courts of targeted countries in which acts of infringement are committed.

The applicant has the choice between the State of domicile or establishment of the defendant and the place where the harmful event occurred

This possibility offered by European judges to bring an action for infringement before the national court of their choice to rule on acts of infringement committed in the territory of any Member State is a means for the applicant to optimize costs. procedure according to the legislation. France, for example, offers irrefutable means of legal proof, such as a bailiff’s report, to establish facts of counterfeiting, at attractive prices.

This judgment is not a simple confirmation of the well-established case law of the CJEU concerning the jurisdictional competence of infringement practiced by means of the Internet as was the case with a judgment of 22 January 2015 of the CJEU. Even if, in both situations, the result is the same: the applicant has the choice between the State of domicile or establishment of the defendant and the place where the harmful event occurred.

In its decision of 22 January 2015, the CJEU decidedruled on jurisdiction in litigation relating to copyright and internet infringement infringements.

In this case, a professional photographer observed that some of her photographs were offered for viewing and downloading on a website published by a company incorporated under German law, without the photographer’s permission or copyright information. Considering that her copyright had been violated, the photographer applied to the Austrian court for damages. The court decided to stay the proceedings in order to question the CJEU on its jurisdiction. The question referred for a preliminary ruling was as follows: ‘ Should Article 5, point 3 of Regulation [No 44/2001] be interpreted as meaning that, in a dispute relating to the infringement of rights related to the law copyright, committed by making a photograph accessible for consultation on an Internet site, the latter being operated under the top level domain of a Member State other than that in which the holder of the right has his domicile, he does not jurisdiction exists that

• in the Member State in which the alleged perpetrator has its registered office as well as
• in the Member State (s) to which the website is intended, because of its content? ”

The Austrian court wonders whether the competent court is that of the place of the defendant’s domicile or if it is that of the place where the offenses were committed.

First, the European judges recall that in principle, Article 2 of Regulation No. 44/2001 provides that jurisdictional jurisdiction rests with the courts of the Member State in which the defendant is domiciled. However, Article 5 (3) of the Regulation admits However, Article 5 (3) of the Regulation admits the jurisdiction of the court of the place where the harmful event has occurred or is likely to occur. It was on this basis that the photographer seized the Austrian court: she found the damage in Austria, which is also the place of her domicile.

This dispute was an opportunity for the CJEU to clarify the interpretation of the concept of “place where the harmful event has occurred or is likely to occur”. It considers that this concept includes both “the place of the materialization of the damage” and “the place of the causal event which is at the origin of this damage”. This means that the applicant will be able, at the option, to seize the jurisdiction of one or the other place.

This Member State and not damage caused throughout the territory of the European Union

The causal event can be defined as “ the fact in which the alleged damage originates “. In the present case the place of the causal event constitutes Germany, the place of the seat of the defendant company, according to the Court, this one is not relevant in that it concerns the place of “ triggering of the technical process for displaying the photographs on said website “. Consequently, the Court excludes the jurisdiction of the German jurisdiction by causal event. Nevertheless, it considers that the latter may have jurisdiction with regard to “the place of the materialization of the damage”.

On the contrary, the CJEU considered that the German court could have jurisdiction with regard to the “place of the materialization of the damage” which refers to the accessibility of the disputed photographs in the Member State to which the court seised falls. In the present case, the website of the defendant company was accessible in Austria, which made it possible to establish the materialization of the damage in that country. However, it should be noted that when the jurisdiction of a Member State is seized for the place of the materialization of the damage, then it is only competent to hear the damage caused on the territory of that Member State and no damage caused throughout the territory of the European Union.

Finally, we see that in these two judgments, the European judges are based on different rules but the result is the same: the possibility of choosing the court to be seized for the applicant and a territorial limitation of the judges’ powers.

Eternoscorp remains at your disposal in case of problems relating tou respect for your intellectual property rights as well as to seize the jurisdiction that best suits your situation.