International jurisdiction in online EU trade mark infringement cases: where is the place of infringement located?

Oh, tell me more
about jurisdiction
in IP infringement cases

Over the past couple of years the Court of Justice of the European Union (CJEU) has been busy addressing the question of jurisdiction [also an evergreen topic of conversation in any situation, notes Merpel] for alleged online infringements of copyright: just think of the decisions in Pinckney [Katposts here] and Hejduk [here], in which the CJEU held that accessibility of the allegedly infringing content is one of the criteria to determine jurisdiction within Article 7(2) of the Brussels I Regulation recast.

But what about online infringements of what are soon to be called EU trade marks?

Article 97 of the EU Trade Mark Regulation (EUTMR, the content of which will not be substantially affected when Regulation 2015/2424 enters into force in March [here and here]) sets a number of grounds to determine international jurisdiction in cases of alleged infringement of a EU trade mark. 

Besides the possibility to bring proceedings before the courts of the Member State of domicile/establishment of the defendant/claimant and where the European Union Intellectual Property Office (soon to replace use of ‘Office for Harmonization in the Internal Market’) has its seat, Article 97(5) EUTMR also allows for proceedings to be brought “in the courts of the Member State in which the act of infringement has been committed or threatened”. 

I have wondered for a while where this place may be located in the case of alleged online infringements.

Clear intention to target
that b***y salami slice!

Intention to target or accessibility?

In the past, some courts, eg in Italy and Scotland,  have held the view that jurisdiction would arise any time the website at issue is intended to be accessed in the country in which the trade mark is registered and the damage done by the infringement is accordingly inflicted there.

Whether intention to target/targeting, ie requiring that the activity be intended to have effects within the territory of the Member State asserting jurisdiction, is actually the criterion to employ in online EUTM infringement cases to determine jurisdiction has not yet been addressed specifically by the CJEU. 

As such, lacking specific guidance in the EUTMR, it is uncertain how the Court will interpret Article 97(5) EUTMR if and when given the opportunity to do so.

I have now written an article on this very issue, that has been accepted for publication in the European Intellectual Property Review.

I have focused on relevant CJEU decisions in the area of trade marks – whether relating to ‘offline’ infringements of EU trade marks or online infringements of national trade marks – and drawn a parallel with recent case law on jurisdiction in online copyright infringement cases, also considering that the same allegedly infringing act may infringe both trade mark and copyright laws. 

The place of the activation process

My conclusion is that, when and if given the opportunity to address the question of where the place of infringement within Article 97(5) EUTMR is located, in light of preceding jurisprudence the CJEU may hold that this is place where the activation of the process for the technical display of infringing material on a certain website takes place. While in the majority of instances this is likely to be the same place where the defendant is domiciled/established, this may not always be the case.

The place of the whole activation process

Any problems?

In any case it is arguable that such an interpretation of Article 97(5) EUTMR – if endorsed by the CJEU – would likely trigger some unwanted consequences.

On the one hand, the choices for the claimant would be reduced, in the sense that the criterion in Article 97(5) EUTMR would likely be the same (even if not always) as that of the place of domicile/establishment of the defendant.

In addition, unlike Article 7(2) Brussels I recast and in light of the CJEU stance in Coty [here], the place where the damage occurred could not represent a valid criterion to determine jurisdiction. The shortcomings of limiting jurisdiction only to the courts located in the place of the causal event have been highlighted both by Advocates General Darmon and Léger and the CJEU in Shevill, when it considered that this place would like coincide with the place where the defendant is domiciled or established, and limiting jurisdiction only to this ground would make the special rule in Article 7(2) Brussels I recast (and consequently also Article 97(5) EUTMR) meaningless. In addition, with particular regard to online infringement cases, determination of the defendant's domicile/establishment may not always be a straightforward process.

On the other hand, in Article 97(5) EUTMR situations, jurisdiction would subsist even without the need to prove that the allegedly infringing activities of the defendant where directed at consumers located in that Member State.

However, the fact that targeting would not be expressly required to establish jurisdiction might have implications with regard to the damages that the claimant would be realistically able to seek and obtain in that particular Member State. For a claimant to be able to rely effectively on Article 97(5) EUTMR – and make it worth for him/her to start proceedings in a certain Member State – it would be in fact necessary to demonstrate not only that the defendant has acted in that territory by activating the relevant display process, but also that the activity at issue may be considered as having been directed to consumers on that specific territory. 

***

My piece is available on SSRN here.