My European Union trade mark is being infringed on the Internet! Where could we bring an infringement action?
When the infringement of an EU trademark occurs on the Internet, in different EU territories, determining the appropriate jurisdiction to initiate actions may raise some doubts.
The basic rules of jurisdiction to face an infringement of European Union trademark rights lead, first, to the domicile of the defendant (Brussels I Regulation). Alternatively, we can also initiate actions in the place where the EU trademark rights infringement (RMUE) occurred.
But what happens if the advertising or offer is made through the Internet? Could we choose any EU country to file a lawsuit before its courts? The answer is yes, considering some requisites.
The Court of Justice of the European Union (case C-172/18), in its Judgment of September 5, 2019, answered a preliminary ruling referred by the United Kingdom Court of Appeal (on the interpretation of Article 97(5) of Council Regulation (EC) No 207/2009). The CJEU explained that the EU trademark courts of each member state will be competent to hear about the infringement of the European Union’s trademark made through the Internet if: (i) the advertising or offer for sale of the product or service is directed to the consumers or traders of that country and (ii) the information is made accessible to them.
It could be understood as a product or service aimed at a specific country or jurisdiction, for example, if: (i) the website is translated into the language of the specific country; (ii) the offer or advertisement is on a website with a country-specific domain name; (iii) the offer or advertisement appears on a website where a telephone number with the national prefix of the given country appears; or (iv) the offer is made using the currency of the specific country; (v) if the geographical delivery area includes that country.
This alternative jurisdiction can be accessed independently of: (a) where the defendant is domiciled; (b) whether the sale is made or not; (c) where the offender’s servers are located; (d) where the infringing products are located.
This resolution would not be contradictory to the previous decision of the CJEU in the Nintendo case (C-24/16 and 25/16), where the Court referred to the jurisdiction of the courts of the “country where the initial act of infringement was committed”, that is, the place where the process of the online sale offer was activated (mentioning the Rome II treaty that allows determining the law applicable to the non-contractual obligations derived from the infringement).
In this case, the alternative jurisdiction referred to in this last decision of the CJEU (C-172/18), based on the RMUE, is due, as explained by the Court, to how complicated it may be for the plaintiff to know the place where the advertising of the offending offer or service was activated.
In summary, it is possible to bring actions against an EU trademark infringer operating in the e-commerce market, in any EU country where the consumers and traders to whom such advertising or sales offer is directed (and accessible by them). This is despite the infringer took decisions and steps in another Member State to bring about that electronic display.