International jurisdiction for infringement of an EU trade mark by advertising on the Internet

With its judgment in Case C-172/18 (AMS Neve Ltd and Others v Heritage Audio SL and Others), the Court of Justice of the European Union (CJEU) significantly strengthened the legal position of EU trade mark owners. In the case of an infringement of an EU trade mark on the Internet, also courts of the Member State, in which consumers or traders to whom the infringing advertising and offers for sale are directed are located, have jurisdiction. Often, this now allows the owner of an EU trade mark to take legal action in his home country against infringements on the Internet. At least with respect to Germany, this means that the legal situation is changing considerably.

In the underlying facts of the case, the plaintiffs, who come from the United Kingdom, had sued for infringement of their EU trade mark in connection with the advertising and sale of audio equipment via the Internet in England. The defendants were domiciled in Spain and sold their products via their online shop operated from there. The Court of First Instance had dismissed the action due to the lack of international jurisdiction of the English court. The Court of Appeal decided to suspend the proceedings. Inter alia, it referred the following question to the CJEU for a preliminary ruling: ‘In circumstances where an undertaking is established and domiciled in Member State A and has taken steps in that territory to advertise and offer for sale goods under a sign identical to an EU trade mark on a website targeted at traders and consumers in Member State B: Does an EU trade mark court in Member State B have jurisdiction to hear a claim for infringement of the EU trade mark in respect of the advertisement and offer for sale of the goods in that territory?‘

In principle, the CJEU has answered this question in the affirmative. According to the Court, an infringing act is in principle committed in the territory where the consumers or traders, to whom the advertising and offers for sale are directed, are located. Courts of that Member State therefore have international jurisdiction. It is irrelevant whether the operator of the website is established in another Member State of the European Union and has placed the trade mark infringing offer on the Internet from there. It is also irrelevant whether the server is located in another territory or whether the goods which are the subject of advertising and offer for sale are located in another territory. In the opinion of the CJEU, any other view would entail the risk of circumventing the tort jurisdiction laid down in Article 125 (5) of the European Union Trade Mark Regulation (EUTMR), which would ultimately undermine the effectiveness of the European trade mark law. 

The CJEU’s decision deserves approval in every respect. With its ruling, the CJEU provides clarity and strengthens the position of EU trade mark owners. The enforcement of rights will be made considerably easier. The ruling de facto revises the ‚Parfümmarken‘ decision of the German Federal Supreme Court (BGH) from 2017, which was strongly criticized in Germany. At the time, the BGH had taken the completely opposite view in a very similar case. In the case of cross-border offers on the Internet, the BGH had considered the place where the process of publishing the infringing content was initiated to be decisive. By its interpretation, the German Federal Surpreme Court had de facto abolished Art. 125 (5) EUTMR. From now on, this will no longer be able to endure, and German courts will have to follow the outlined guideslines of the CJEU.