Promotion in the EU, liability in Germany? – News on cross-border trademark infringements
The worldwide availability of offers and ordering options is one of the great achievements of online commerce. However, the expansion of the territorial reach can also be accompanied by an expansion of liability for the infringement of intellectual property rights. The operator of an online store in another EU country has now had to learn this before the Frankfurt Higher Regional Court (judgment of March 11, 2021 – 6 U 273/19).
The store operator had – at a time when the United Kingdom had not yet left the EU – promoted a product in his Northern Irish online store under the MO trademark, which is protected in Germany for identical goods, whereby this trademark was not reproduced on the product itself or its packaging. The online store was exclusively available in English under an address with the top-level domain .co.uk and the currency was exclusively the British pound. However, the store operator advertised a “worldwide shipping” of the offered goods. A test purchaser of the owner of the MO trademark ordered the product advertised in the online store under the sign MO to Germany and the store operator delivered. Subsequently, the trademark owner and the store operator disputed whether the delivery to Germany of the product advertised in the Northern Irish online store under the sign MO constituted an infringement of the German trademark MO, if the sign MO was not used on the product itself or its packaging.
The Higher Regional Court of Frankfurt am Main overturned the decision of the first instance and found a trademark infringement. According to the judges, the mere fact that the product promoted on the Northern Irish website was delivered to Germany was sufficient to establish a sufficient “commercial effect” for an international jurisdiction of German courts and a trademark infringement in Germany. The fact that the disputed designation MO was not even reproduced on the product itself or its packaging did not seem to matter to the court.
The decision, which has become final and binding, could be the starting point for an expansion of the liability of operators of foreign online stores in Germany. Although scenarios of trademark infringements through cross-border acts of use on the Internet have been discussed in various decisions, case law has so far endeavored to set rather narrow limits here. In several decisions, the German Federal Court of Justice (BGH GRUR 2005, 431 – Hotel Maritime; GRUR 2012, 621 – Oscar) required that the infringing acts be clearly aimed at the German public or the German market, which could be expressed, among other things, in an offer in the German language, by providing German contact details or by accepting German currency. It remains to be seen to what extent the current decision of the Frankfurt Higher Regional Court is the start of a shift of paradigm. In any case, operators of online stores in other EU countries, as well as operators of German online stores that ship throughout the EU, should be aware that the EU internal market not only brings increased opportunities for sales, but also increased risks of trademark infringement, even if measures have been taken to reduce the risk in the goods offered, for example, by means of a neutral product presentation.
