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International jurisdiction in online EU trade mark infringement cases: Where is the place of infringement located?

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Article 97 of the European Union Trade Mark Regulation (EUTMR) sets a number of grounds to determine international jurisdiction in cases of alleged infringement of a European Union trade mark (EUTM).

Besides the possibility to bring proceedings before the courts of the Member State of domicile/establishment of the defendant/claimant and where the European Union Intellectual Property Office (formerly the Office for Harmonization in the Internal Market) has its seat, Article 97(5) EUTMR also allows for proceedings to be brought “in the courts of the Member State in which the act of infringement has been committed or threatened”.

Lacking specific guidance from the Court of Justice of the European Union (CJEU), this contribution asks how Article 97(5) EUTMR is to be interpreted in relation to proceedings for alleged infringement of a EUTM over the internet.

It concludes that, in light of preceding jurisprudence, the CJEU may hold that this is place where the activation of the process for the technical display of infringing content on a certain website takes place. While in the majority of instances this is likely to be the same place where the defendant is domiciled/established, this may not always be the case.

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International jurisdiction in online EU trade mark infringement cases: Where is the place of infringement located?

  1. 1. @eLAWnora eleonora@e-lawnora.com International jurisdiction in online EU trade mark infringement cases: Where is the place of infringement located? European Policy for Intellectual Property Oxford, 3-5 September 2016 Eleonora Rosati
  2. 2. Art 97 EUTMR – International jurisdiction • Domicile/establishment of the defendant/claimant • Where EUIPO has its seat • (para 5) "in the courts of the Member State in which the act of infringement has been committed or threatened"
  3. 3. Where is this place located in online TM infringement cases?
  4. 4. Contents 1. Relationship between Art 97 EUTMR and Art 7(2) Brussels I recast 2. CJEU case law on jurisdiction in TM infringement cases 3. CJEU case law in online copyright infringement cases 4. Conclusion: place where the activation of the process for the technical display of infringing material on a certain website takes place
  5. 5. 1. Relationship between Art 97 and Art 7(2) Brussels I recast
  6. 6. Article 7(2) "A person domiciled in a Member State may be sued in another Member State … in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur.“ a) Place where the damage occurred b) Place of event giving rise to it
  7. 7. Coty (2014) • AG Jääskinen • Art 97(5) narrower than Art 7(2): doesn’t include place where damage occurred • Case law on Art 7(2) inapplicable although provisions have same rationale (close connection for sound administration of justice) • CJEU • Concept of "Member State in which the act of infringement has been committed … refers to the Member State where the act giving rise to the alleged infringement occurred or may occur, not the Member State where that infringement produces its effects."
  8. 8. 2. CJEU case law on jurisdiction in TM infringement cases • L’Oréal (2011) • CJEU appeared to suggest that intention to target, rather than accessibility, is required to trigger the applicability of TM Directive and EUTMR • Applicable law, not jurisdiction • Wintersteiger (2012) • National TM + Art 7(2) • Place of event giving rise to damage is place of establishment of infringer as this is where activation of display process is decided
  9. 9. 3. CJEU case law in online copyright infringement cases • Pinckney (2013) • Rejected targeting • Hejduk (2015) • "the activation of the process for the technical display of the [infringing content] must be regarded as the causal event. The event giving rise to a possible infringement of copyright therefore lies in the actions of the owner of that site".
  10. 10. Conclusion • Place of infringement is where activation of process for technical display of infringing material on a certain website takes place • Helpful? • In most cases such place is likely to coincide with Ms where defendant domiciled/established • Reduced choices for claimant • Targeting may not be expressly required but for claimant to be able to rely effectively on Art 97(5) it would be necessary to demonstrate • not only that defendant has acted in that territory by activating the relevant display process, but also that • activity at issue may be considered as having been directed to consumers on that specific territory.
  11. 11. Thanks for your attention! eleonora@e-lawnora.com @eLAWnora E Rosati, ‘International jurisdiction in online EU trade mark infringement cases: where is the place of infringement located?’ (2016) 38(8) EIPR 482

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