“Where ‘advertising’ and ‘offers for sale’ are done electronically, they are ‘committed in the territory where the consumers or traders to whom that advertising and those offers for sale are directed are located, notwithstanding the fact that the defendant is established elsewhere.’”
The Court of Justice of the European Union (CJEU) has ruled that an EU trade mark (EUTM) proprietor may bring an infringement action in an EU Member State where advertising or offers for sale are directed or located, in a case concerning alleged infringement of an EUTM in the United Kingdom by a Spanish defendant.
The judgment in Case C172/18 AMS Neve Ltd, Barnett Waddingham Trustees, Mark Crabtree v Heritage Audio SL, Pedro Rodríguez Arribas addresses questions concerning jurisdiction, in particular in cases involving Internet sales. This litigation concerned infringement proceedings brought regarding an EUTM for “1073” in the UK Intellectual Property and Enterprise Court.
The 1073 mark is registered for “sound studio recording, mixing and processing equipment” in Class 9. It was alleged that the defendants had infringed the mark, in particular by using a sign that is identical or similar on their website and social media.
EUTMs are unitary rights, valid across all 28 Member States (27 after Brexit) and infringement actions can be brought in designated EUTM courts in any Member State. Trademark proprietors can bring actions in the Member State where the defendant is domiciled or has an establishment, or in the Member State where the act of infringement has been committed or threatened. In the latter case, the court has jurisdiction only in respect of that Member State.
In this litigation, the England and Wales Court of Appeal asked the CJEU to clarify, essentially, whether the act of infringement takes place only in the jurisdiction where the website was set up and operated, or whether the Member State where consumers are targeted by advertising and offers for sale also has jurisdiction.
Harder to Hide
The CJEU noted that “advertising” and “offers for sale” are prohibited under the EUTM Regulation. Where these acts are done electronically, they are “committed in the territory where the consumers or traders to whom that advertising and those offers for sale are directed are located, notwithstanding the fact that the defendant is established elsewhere, that the server of the electronic network that he uses is located elsewhere, or even that the products that are the subject of such advertising and offers for sale are located elsewhere.”
It added that whether the advertising and offers for sale lead to actual purchases is irrelevant.
Any other interpretation would make it easier for defendants to hide, said the Court. Moreover, courts in the Member State where the advertising and offers for sale are directed “are particularly suited to assessing whether the alleged infringement exists” due to proximity to the harmful event and the ease of taking evidence.
In conclusion, the Court said:
The answer to the question referred is that Article 97(5) of Regulation No 207/2009 must be interpreted as meaning that the proprietor of an EU trade mark, who considers that his rights have been infringed by the use without his consent, by a third party, of a sign identical to that mark in advertising and offers for sale displayed electronically in relation to products that are identical or similar to the goods for which that mark is registered, may bring an infringement action against that third party before an EU trade mark court of the Member State within which the consumers or traders to whom that advertising and those offers for sale are directed are located, notwithstanding that that third party took decisions and steps in another Member State to bring about that electronic display.
The AMS Neve case is the first major IP judgment of the CJEU’s new term. A number of decisions in other copyright, trademark and design cases are expected in the coming weeks, according to the Court’s calendar.