CJEU clarifies connecting factors and level of assessment for international jurisdiction of EU trade mark courts

Art. 125 EUTMR provides an elaborate cascade for international jurisdiction of the EU trade mark courts. The defendant must be sued:

1. In the EU Member State in which it is domiciled (Art. 125(1) EUTMR);

2. Absent a domicile in the EU, in the EU Member State where the defendant has an establishment (Art. 125(1) EUTMR);

3. Absent a domicile and an establishment of the defendant in the EU, in the EU Member State where the plaintiff is domiciled (Art. 125(2) EUTMR);

4. Absent a domicile of the plaintiff in the EU, in the EU Member State where the plaintiff has an establishment (Art. 125(2) EUTMR);

5. If neither the plaintiff nor the defendant has its domicile or an establishment in the EU, before Spanish courts (being the courts of the seat of EUIPO, Art. 125(3) EUTMR).

As an alternative to these places of jurisdiction, Art. 125(5) EUTMR allows the defendant to be sued in the Member State in which the act of infringement has been committed or threatened. The interpretation of the phrase “in which the act of infringement has been committed or threatened” has been the subject of controversy and several CJEU judgments.

Its interpretation is particularly challenging when it comes to infringements on the Internet. The latest decision in Lännen (C-104/22) sheds some further light on this provision.

Background

The plaintiff, Finnish company Lännen MCE Oy (‘Lännen’), manufactures and sells amphibious dredgers under its EU trade mark no. 3185758 ‘WATERMASTER’. The defendants Berky GmbH (‘Berky’) and Senwatec GmbH & Co. KG (‘Senwatec’) are both based in Germany and belong to the same group of companies.

Lännen alleged that Senwatec infringed its EU trade mark in Google Ads on google.fi. The following ad title showed up when a user with a Finish IP address searched for “watermaster” on google.fi:

“Watermaster – Multipurpose amphibian dredgers – senwatec.de”

This was an ad for Senwatec’s multi-purpose dredgers. The ad was linked to Senwatec’s website www.senwatec.de, which contained an English text stating that Senwatec’s products are used worldwide. It also contained a world map, highlighting the countries in which Senwatec claimed to be active. Finland was not among those countries.

As regards Berky, Lännen alleged that Berky infringed the EU trade mark ‘WATERMASTER’ by using it as a meta tag on the photo-sharing service Flickr.com in connection with images showing various Berky machines. A search on google.fi for ‘watermaster amphibious dredger’ produced a link to Berky’s images on Flickr.com as an organic search result. Neither the search result nor the images on Flickr.com contained any geographical reference.

Lännen sued Berky and Senwatec before a Finish court alleging that the infringing acts took place in Finland and, therefore, basing international jurisdiction on Art. 125(5) EUTMR. The defendants challenged the international jurisdiction of the Finish court, arguing that they neither target the Finish market nor sell their products in Finland.

The Finish court referred three questions to the CJEU, essentially asking for guidance on whether it has international jurisdiction under the circumstances described above.

The CJEU’s judgment

The CJEU stressed that the determination of jurisdiction does not amount to an examination of the substance of that action. It would be excessive to require the national court to carry out a detailed assessment of complex matters of fact and of law. Instead, evidence giving rise to a reasonable presumption that acts of infringement may have been committed or threatened on the territory of a Member State is sufficient to accept jurisdiction under Art. 125(5) EUTMR.

The CJEU continued by reiterating previous case law on Art. 125(5) EUTMR. The provision requires an active conduct of the defendant. There must be sufficient connecting factors to a particular Member State. According to the AMS Neve judgment [discussed here], infringements by way of online advertising and online product offers are committed where the consumers are located, to whom the advertising and offers are directed. Courts in such Member States are particularly suited to assess whether an infringement occurred.

Although the provisions on international jurisdiction in the EUTMR are lex specialis in relation to the Brussels I Recast Regulation (cf. Art. 122 EUTMR), the CJEU found that the latter can be relevant for clarifying and interpreting the meaning of concepts that are similar in both regulations.

Art. 17(1)(c) Brussels I Recast Regulation is deemed to be of particular significance for the interpretation of Art. 125(5) EUTMR. It concerns jurisdiction regarding contracts that have been concluded between a consumer and a business, who directs its activities to the EU Member State where the consumer is domiciled.

The court mentioned the following non-exhaustive list of indicia from the Pammer and Hotel Alpenhof judgment on Art. 17(1)(c) Brussels I Recast Regulation to be relevant in assessing whether activity is directed to a particular EU Member State:

• International nature of the activity;
• Use of a language or a currency other than the language or currency generally used in the EU Member State in which the business is established;
• Mention of telephone numbers with an international code;
• Paying an internet referencing service in order to facilitate access to the business’ website (e.g. Google Ads);
• Use of a top-level domain name other than that of the Member State in which the business is established;
• Mention of an international clientele composed of customers domiciled in various Member States.

In addition, the CJEU found that, on a case-by-case basis, the following factors (which the Finish court explicitly mentioned in its questions) can also play a role:

• Nature of the products concerned;
• Extent of the geographical market of the infringer’s business activities.

Turning to the case at hand, the CJEU found that paying for Google Ads on google.fi, which are linked to Senwatec’s website, is a sufficient connecting factor for jurisdiction of Finish courts.

The use of ‘WATERMASTER’ as a meta tag for a photo-sharing service under a domain with a generic TLD such as Flickr.com, on the other hand, was not considered a sufficient connecting factor. The court held that a website with a generic TLD is not intended for the public of any specific EU Member State. The meta tag is intended only to enable search engines better to identify the images and to increase their accessibility.

Comment

The judgment provides helpful guidance both regarding the connecting factors and the level of assessment required by the national courts to determine international jurisdiction. The decision also applies to international jurisdiction in Community design matters because Art. 82 CDR provides the same jurisdiction cascade as Art. 125 EUTMR. The criteria mentioned by the CJEU are also helpful in assessing whether a particular infringement has a commercial effect in the EU.


Picture is by abdelhak elghali and used under the licensing terms of Pexels.