EU trademark infringement: Where in the world?
In AMS Neve v Heritage Audio (C-172/28) the Court of Justice of the European Union (CJEU) has confirmed that EU trademark owners can issue infringement proceedings in the court of a member state where traders have advertised or made offers for sale displayed electronically, which are directed (targeted) at the public of that member state.
The claimants manufacture audio equipment and alleged that the defendants, who were domiciled in Spain, were advertising and offering for sale on their website audio equipment bearing a sign ‘1073’ that was confusingly similar to the claimants’ UK and EU trademarks. In response, the defendants brought a jurisdiction challenge in the UK Intellectual Property Enterprise Court (IPEC) disputing the jurisdiction of the English court to hear the claim.
IPEC and the Court of Appeal
At first instance, Judge Richard Hacon held that the English court had jurisdiction to try the claim in respect of the UK trademarks under the Recast Brussels Regulation (1215/2012), on the ground that a claimant is entitled to bring a claim in the courts of the member state where damage has occurred.
Hacon reviewed recent CJEU decisions in Wintersteiger (C-523/10) and Coty Germany (C-360/12) and took those decisions to mean that the concept of the “place where the damage occurred” will always be the member state (or the part of a member state) in which the IP right subsists.
Applying that interpretation to the present facts, the English court had jurisdiction for the alleged infringement of the UK trademarks. Equally, Hacon had no issue concluding that the court had jurisdiction for passing off, given the UK is the place where that cause of action subsists.
However, Hacon found that the courts did not have jurisdiction to hear the claim in respect of the EU trademarks under the EU Trade Mark Regulation (207/2009) (all article references are to Regulation [207/2009]—superseded by the European Trade Mark Regulation [EU] 2017/1001. The corresponding provisions on jurisdiction can be found in article 125). The judge reached this conclusion because article 97(5) of the EU Trade Mark Regulation provides that only the courts of the member state in which the “act of infringement has been committed or threatened” will have jurisdiction.
