BGH rules on international jurisdiction of German courts in EU trade mark cases

PerfumeKat

On 9 November the German Federal Court of Justice (BGH) handed down a decision concerning the international jurisdiction of (German) courts under Article 97(5) EUTM Regulation. The case is BGH, I ZR 164/16 of 20 November; "Parfummarken" (in English "perfume trade marks").

Katfriends Oliver Löffel (LÖFFEL ABRAR) and Birgit Clark (former IPKat contributor and current Class 46 blogger) report.

Here's what they write:

“The claimant in the case manufactures and globally distributes various high-end perfumery brands, which are, inter alia, protected by International trade marks that designate the EU. The defendant is a perfume and cosmetic distributor based in Italy. 

The defendant used the claimants brands on its Italian country domain website and, whilst there was no option to order the perfumes, the website included a German language option and contact details.  

The defendant subsequently agreed neither to import perfumes bearing the claimant´s marks nor to offer, advertise or sell such perfumes in Germany unless these had first been put on the market in the EU/EEA with the claimant's consent.  The defendant nonetheless sold such perfumes, which had not been placed on the EU/EEA market with the claimant's consent, via the Internet to a company based in Germany. The defendant handed the goods over to a delivery company in Italy. The claimant further argued that the defendant has send information (e.g. prices) regarding the goods to the German company. The claimant took the matter to court arguing trade mark infringement.  The Regional courts of Munich, however, declined international jurisdiction under Article 97(5) EUTM Regulation but the Munich Higher Regional Court decided that the German national court have jurisdiction.

On further appeal, the BGH has now clarified the interpretation and scope of Article 97(5) EUTM Regulation in cases of cross border trade mark infringement.  The case focusses on the fact that in many cases of cross border trade mark infringements the infringer will have committed various infringing acts in different countries. In case of an infringement of an EUTM, the Bundesgerichtshof now asks for an "overall assessment" of the defendant's behaviour to establish the original infringing act, rather than focussing on the various, separate acts of infringement under Article 9 (1) EUTM Regulation No. 207/2009.  In doing so the BGH rather restrictively applies the CJEU reasoning in its recent decision in Nintendo Co Ltd v BigBen Interactive GmbH  (C-25/16) of 27 September 2017 [here], which was handed down in the context of registered community designs to trade marks. In Nintendo, the CJEU had decided on a request for a preliminary ruling from the Higher Regional Court of Düsseldorf and held that where an infringing reproduction of a registered Community design is committed via a website that is accessible outside a court's jurisdiction, courts will be seized in the place where the website operator activated the process of putting the offer for sale of the infringing reproduction online.  Applying this to the case, the BGH expressly stated that sending emails containing price and product lists did not trigger the jurisdiction of the German courts. Further, the BGH ruled, that the Member State, “in which the act of infringement has been committed” within the context of Article 97(5) EUTM Regulation was not in Germany, since the defendant and the buyer had concluded a contract of purchase via the Internet whereby the goods had then collected by a delivery company in the name of the buyer. Therefore, the BGH concluded that in the case at hand the Member state, in which the act of infringement had been committed, was indeed Italy, because the process of publishing the offer had been initiated (“in Gang gesetzt”)on the defendant's German language website in Italy (cf. paragraph 31).

Initial comment: this decision will - in all likelihood - make it more difficult to bring trade mark infringement proceedings based on an EUTM in cases of cross border infringements before a German court since the BGH requires an overall assessment of the infringers acts to determine the original infringement rather than allowing to focus on separate acts. 

The BGH's decision could therefore affect litigation strategies in cross border trademark infringement scenarios.  There is also an argument that the decision could devalues EUTMs in favour of national trade marks as these would theoretically allow a recourse via Article 5(3) Brussels Regulation.”