Background of the case

AMS Neve is an entity based in the United Kingdom which core business is audio equipment and Heritage Audio, is an entity settled in Spain dealing with the same kind of goods. In 2015 AMS Neve filed a lawsuit against Heritage Audio before the competent Court in United Kingdom concerning an infringement claim arising from the alleged wrongful use of rights conferred by an EU trade mark and two national trademarks. AMS Neve is exclusive licensee over the concerned marks. The plaintiff argues that the defendants have advertised and sold copies of the goods with an identical or similar sign in Internet targeting the British consumers.

Subsequently, the defendants in the main proceedings pleaded that the court before which the action was brought had no jurisdiction. In a judgement issued by the Intellectual Enterprise Court of 2016, it was held that it had no jurisdiction to hear the infringement action in so far as that action is based on the EU trade mark at issue in accordance with article 97.1 of Regulation No 207/2009: the Spanish jurisdiction is competent to hear the matter (the territory where the defendant is domiciled) and pursuant to article 97.5 of the aforementioned Regulation: the courts of the Member State in whose territory the act of infringement has been committed. The applicants in the main proceedings brought an appeal against that judgment before the Court of Appeal. That Court decides to stay proceedings and to refer the following question for a preliminary ruling, adding in its decision that that question concerns the interpretation of Article 97(5) of the Regulation:

In circumstances where an undertaking is established and domiciled in Member State A and has taken steps in that territory to advertise and offer for sale goods under a sign identical to an EU trade mark on a website targeted at traders and consumers in Member State B: 

  • does an EU trade mark court in Member State B have jurisdiction to hear a claim for infringement of the EU trade mark in respect of the advertisement and offer for sale of the goods in that territory? The answer is yes based on the following grounds:

Where the acts allegedly committed by the defendant consist of advertising and offers for sale displayed electronically with respect to products bearing a sign identical or similar to an EU trade mark without the consent of the proprietor of that mark, it must be considered as if they were committed in the territory where the consumers or traders targeted are placed, regardless of the domicile of the defendant, that the server of the electronic network that he uses is located elsewhere, or even that the products that are the subject of such advertising and offers for sale are located elsewhere. The logic behind this reasoning is that a third party cannot evade the application of the Regulation by arguing that the infringing goods and advertisement are electronically displayed outside the territory of the EU and thus this provisions shall not be applied.

The Court also states that in most of the situations, it becomes almost impossible to find out where the preparations to create a website and the advertising material took place.

On the other hand, it is also highlighted that the fact that advertising materials and sale offers did not have the effect of attracting consumers it is irrelevant

In view of all the above, the remaining questions are not be replied by the Court.

  • if not, which other criteria are to be taken into account by that EU trade mark court in determining whether it has jurisdiction to hear that claim?
  • in so far as the answer to (ii) requires that EU trade mark court to identify whether the undertaking has taken active steps in Member State B, which criteria are to be taken into account in determining whether the undertaking has taken such active steps?

Judgement of the European Court of Justice (Fifth Chamber) of September 5, 2019. Matter C172/18.