CJEU says EUTM suits can be brought where infringers’ consumers are based
Europe’s highest court has ruled that an EU trademark owner who believes their IP has been infringed, may sue before an EU court in any member state in which the infringer’s ‘advertised to’ consumers are based.
In a decision earlier today, September 5, the Court of Justice of the European Union advised the English Court of Appeals that audio equipment company AMS Neve could bring a trademark infringement action against competitor Heritage Audio in the UK, despite the fact that Heritage is based in Spain.
In its ruling, the CJEU said EU trademark owners who consider they have been infringed in advertising and offers for sale displayed electronically, “may bring an infringement action against that third party before a European Union trademark court of the member state within which the consumers or traders to whom that advertising and those offers for sale are directed are located, notwithstanding that that third party took decisions and steps in another member state to bring about that electronic display.”
In October 2015, UK-based AMS and Barnett Waddingham Trustees (BWT) sued Heritage at the UK Intellectual Property and Enterprise Court (IPEC), claiming that Heritage had infringed an EU trademark owned by BWT, which it exclusively licences to AMS.
The EU trademark covers goods such as sound studio recording, mixing and processing equipment.
Heritage Audio allegedly sold imitations of AMS goods to consumers in the UK bearing a sign that is identical or similar to the EU trademarks
AMS submitted screenshots taken from the Heritage Audio website, Facebook and Twitter accounts and an invoice issued by Heritage to a consumer in the UK as evidence of infringement.
But, Heritage argued that the court had no jurisdiction over the matter.
“While Heritage does not deny that its products might have been purchased in the UK through other companies, it asserts that it has not itself advertised in the UK or made any sales in the UK,” the CJEU said.
In October 2016, the IPEC upheld Heritage’s argument and said it had no jurisdiction to hear the suit as the action is based on an EU trademark.
While it did agree that AMS’ evidence was directed to infringement in the UK, it said the action did not concern national IP rights and should be heard by a court where Heritage is domiciled, in Spain.
AMS then appealed to the English Court of Appeals, which asked the CJEU to decide on the matter.
The CJEU said its opinion was a “step in action pending before the national court”, and a judgment on the dispute would be a matter for that court.
Jeremy Blum and Simon Clark, partners at Bristows, said the result at the CJEU ought to have been obvious, but many lawyers ahd been concerned about how to efficiently enforce EU trademarks against online infringement.
“Today’s decision, which arose from a reference from the UK, is of critical importance in dealing with trademark infringement online in Europe and restores what most of us thought was the jurisdictional position regarding online infringement,” the partners said.
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