This decision brings some clarity to the international jurisdiction provisions of the EU Trade Mark Regulation and confirms owners of EU trade marks have a choice of forums in which to attack online infringers.

Intellectual Property Enterprise Court

AMS Neve, a company based in the UK which sells audio equipment, sued Heritage Audio, a Spanish company, in the UK’s Intellectual Property Enterprise Court (IPEC) in relation to infringement of two UK trade marks and one EU trade mark.

Under the national marks, the IPEC concluded it did have jurisdiction under the Brussels I (Recast) Regulation (1215/2012), being in the member state where EU Trade Mark Regulation the harm had occurred and where the rights subsisted.

Under the EU marks, however, the IPEC concluded that infringement, in accordance with article 97(5) of the Community Trade Mark Regulation (as it was) was subject to the jurisdiction of the member state where the defendant had taken steps to put the offending sign on the website (that is, “where the act was committed”).

Court of Appeal

On appeal, the Court of Appeal stayed proceedings to refer the question to the CJEU, asking it in circumstances where an undertaking is domiciled in member state A and has taken steps to advertise on a website targeted at consumers in member state B, whether the court in B has jurisdiction to hear a claim for infringement in respect of the advertisement in B.

CJEU

The core of the CJEU’s decision was in respect of the proper interpretation of article 97(5), which the court said is to provide trade mark proprietors with a targeted action where an infringing act occurs in a single member state.

Accordingly, the CJEU confirmed, “the act of infringement” must be understood to relate to acts committed or threatened in the territory where the commercial content of the advertisement has been made accessible to customers to whom it was directed.

An alternative interpretation would mean that infringers outside of the EU could avoid infringement altogether, or proprietors would be forced to bring “similar” actions in different member states as against an infringer, depending on whether it asserts its national or EU-wide mark. The case law which had troubled the IPEC (Coty Germany C-360/12 and Wintersteiger C-523/10) was distinguished.

The CJEU has restored some balance to what was considered to be a slightly askew interpretation of the relevant provisions. While this decision will remain an important clarification for owners of EU-wide trade marks, in a post-Brexit UK its relevance may be of limited use, assuming the UK leaves the EU with ‘no deal’ (31 January 2020 at time of writing) and the EU Trade Mark Regulation (and other EU jurisdictional law) ceases to have direct effect in the UK. Regardless, the decision is a healthy reminder that EU-wide trade marks remain an important tool for brand owners intent on trading in Europe post-Brexit and filing both EUTMs and UK national marks remains best practice to ensure the broadest protection in a post-Brexit landscape.