IP and IT Law Bytes: Trade mark infringement: jurisdiction

27 August 2014

Audrey Horton

The European Court of Justice (ECJ) has given guidance on the establishment of jurisdiction in circumstances where the defendant has committed no acts within the jurisdiction seised.

Background

The Brussels Regulation (44/2001/EC) sets out a system for the allocation of jurisdiction and for the reciprocal enforcement of judgments. Article 2 of the Brussels Regulation provides that those domiciled in an EU member state should be sued in that state. However, Article 5(3) of the Brussels Regulation provides that a person may be sued in matters relating to tort in the courts in the place where the harmful event occurred or may occur.

Article 97(5) of the Community Trade Marks (CTM) Regulation (207/2009/EC) provides that proceedings for infringement CTMs may be brought in the court of the member state in which the act of infringement has been committed or threatened.

Facts

C produced and distributed perfume and cosmetics and owned a CTM registration for a three-dimensional bottle shape in relation to perfumes.

A Belgian company, F, sold bottles of perfume to a German wholesaler, S, which collected them from F’s Belgian premises and exported them to Germany, before selling them in Germany.

C brought proceedings for trade mark infringement and unfair competition against F in Germany. The German courts dismissed the proceedings for lack of jurisdiction, on the basis that F had only acted within Belgium.

On appeal, the German courts referred two questions to the ECJ:

  • Is Article 97(5) of the CTM Regulation to be interpreted as meaning that an act of infringement is committed in one member state, A, where, as a result of an act in another member state, B, there is participation in the infringement in A?
  • Is Article 5(3) of the Brussels Regulation to be interpreted as meaning that the harmful event occurred in one member state, A, if the tortious act that is the subject of the action, or from which claims are derived, was committed in another member state, B, and consists in participation in the tortious act that took place in A?

Decision

The ECJ held that:

  • Under  Article 97(5) of the CTM Regulation, where a person sells and delivers a counterfeit product in one member state, and that product is then resold by the buyer in another member state, there is no jurisdiction to sue for trade mark infringement in the second member state. There is no jurisdiction against the original seller if it did not act in the member state where the court seised is situated.
  • Under Article 5(3) of the Brussels Regulation, the court in a member state does not have jurisdiction in respect of an action brought under unfair competition laws based on the place where the event giving rise to the damage occurs unless the defendant acted there. However, Article 5(3) of the Brussels Regulation does give jurisdiction based on “the place where the harmful event occurs” for an action under unfair competition laws brought against a defendant established in another member state for an act committed in another member state but which caused (or may cause) damage within the jurisdiction of the court seised.

Comment

This decision is a reminder that proceedings relating to infringement and validity of trade marks are subject to their own rules of jurisdiction. In respect of unfair competition, under Article 5(3) of the Brussels Regulation, where a defendant is domiciled in a member state other than where the court is situated, proceeding for damages can be brought on the basis of an act that took place in that other member state where damage occurred in the court’s jurisdiction.

Case: Coty Germany GmbH v First Note Perfumes NV C-360/12.

First published in the August 2014 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.

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