27 November 2019Jurisdiction reportsJens Künzel

Germany jurisdiction report: Jurisdiction ruling overturns German case

This decision, which the English Court of Appeal referred to the CJEU, has a particular impact on the German legal landscape, as it directly contradicts a 2017 decision by Germany’s highest court in civil matters, the Federal Supreme Court in Karlsruhe.

Perfume Trademarks

In November 2017, Germany’s Federal Supreme Court had rendered a decision, Perfume Trademarks, which at the time was seen as a considerable shake-up of the way EU trademarks and Community Designs would be enforced (or rather, no longer enforced) in Germany.

This decision dealt with the issue of jurisdiction for claims for infringement of EU trademarks in Germany (national German designs were not concerned). It concerned the appropriate court venue in cases where the defendant has committed several potentially infringing actions in different countries member states of the EU—a frequently occurring scenario within the EU.

The decision directly applied only to EU trademarks; however, a majority of practitioners and legal experts alike expected that the jurisdiction of Community Designs also to be affected.

In its judgment, the Federal Supreme Court evaluated two potentially infringing actions: a potential offer of a perfume under a trademark on an Italian website that could be accessed from Germany; and an offer contained in an email sent from Italy to Germany.

The court said that what counted was the “location of the initial infringement”, referring to earlier decisions of the CJEU, which had adopted the same approach, albeit not with respect to the issue of jurisdiction, but to the entirely different issue of applicable law.

For the website offer, the location of the initial infringement was the location at which the publication originated. Since the website was managed from Italy, Italy was the location of infringement.

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