CJEU pours cold water on Coty counterfeiting case

Europe’s highest court has blocked Coty, a beauty-product maker, from taking action in Germany against an alleged counterfeit seller in Belgium.

Coty sells the perfume ‘Davidoff Cool Water Woman’ in a coloured bottle with lettering on it.

First Note, a Belgian perfume wholesaler, sold a perfume called ‘Blue Safe for Women’ to a man in January 2007. He picked up some products at First Note’s offices and subsequently resold them in Germany.

Coty sued First Note in response, claiming that its distribution of the perfume in a similar bottle constituted trademark infringement, as well as unlawful comparative advertising and unfair imitation.

The action was dismissed both at first instance and on appeal, where a judge said German courts have no international jurisdiction.

Coty then appealed to Germany’s Supreme Court, the Bundesgerichtshof, which referred the case to the Court of Justice of the European Union (CJEU).

The Bundesgerichtshof asked, in essence, whether courts in a member state (Germany) where a counterfeit good is resold can hear a case against the seller of those goods, even if he or she is based in another member state (Belgium).

In a ruling on June 5, the CJEU said no.

“The concept of the ‘member state in which the act of infringement has been committed’ in Article 93(5) of Regulation No 40/94 must be interpreted as meaning that, in the event of a sale and delivery of a counterfeit product in one member state, followed by a resale by the purchaser in another member state, that provision does not allow jurisdiction to be established to hear an infringement action against the original seller who did not himself act in the member state where the court seised is situated.”

The case will return to the Bundesgerichtshof in Germany.