The Higher Regional Court of Frankfurt recently ruled on the territorial scope of cease and desist claims and the law applicable to damages claims in a case where infringing acts occurred in several EU Member States (Higher Regional Court of Frankfurt, case ref. 6 U 4/15). Generally, the EU trademark regulation provides unitary protection of the EU trademark throughout the territory of the European Union. It particularly provides for unitary cease and desist claims in Art. 9, but does not contain any substantial rules regarding damages claims. According to Art. 8 para. 2 of the Rome II regulation on the law applicable to non-contractual obligations, such claims are governed by the “law of the country in which the act of infringement was committed”. The interpretation of this wording is therefore decisive in deciding whether or not the EU trademark also has unitary effect regarding damages claims.

Background

The Plaintiff owns the IR registration “BEAUTY TOX” which designates the European Union and claims, among others, protection for beauty and body care products in class 3. The Defendant, a Swiss company, offered cosmetics under the sign “BEAUTYTOX” through its German language website and had them distributed globally through a Dutch company. The Plaintiff had arranged a test purchase in the Netherlands and brought cease and desist as well as damages claims relating to Belgium, the Netherlands and Germany.

The decision of the Court

First, and unsurprisingly in light of the existing case law (Chronopost judgment of the European Court of Justice, “CJEU”), the Court pointed out that the cease and desist claims cover the whole European Union, irrespective of whether infringements have occurred or will occur in all Member States. The danger of repetition resulting from one act of infringement in one Member States therefore extends to the whole European Union.

Regarding damages claims, the Court held that the Plaintiff had successfully substantiated that (in light of the enforcement directive) German, Belgian, and Dutch law all provide for such claims and therefore granted them. Just as the CJEU previously held in the context of community design infringements (Gautzsch/Duna judgment, recital 53, 54), the Court did not decide expressly whether the laws of the states where the infringing acts occurred apply in parallel or whether a unitary place of infringement must be found.

Comment

In situations involving infringing acts occurring in several states, the Federal Court of Justice favored a strict application of the wording “law of the country in which the act of infringement was committed” in the context of community designs, leading to the parallel application of several laws (German Federal Court of Justice, GRUR 2012, 1253, 1257, case reference I ZR 74/10, so-called “mosaic approach”).

In order to avoid such a burdensome and ineffective parallel application of several laws regarding EU trademarks, the Rome II regulation could be interpreted as referring to a single law applicable to damages claims, e.g. the law of the state of the most significant infringing action or of the original action causing the parallel infringing acts. Given that under German procedural law, the plaintiff has to substantiate the foreign law in this context (Higher Regional Court of Frankfurt, GRUR-RR 2012, 473, 474, case reference 6 U 10/11), e.g. by submitting statement of local attorneys, the question of the reduction of the number of applicable laws also has cost-related implications.

So far, the EU legislature has not taken action in this regard in its revision of Art. 102 para. 2 of the EU trademark regulation and it is unclear whether it will address the issue in its revision of the Rome II regulation. With the relevant courts leaving the question open as well, plaintiffs continue to face high cost risks when enforcing their EU trademarks. For the time being and to the disadvantage of trademark holders, the effect of the EU trademark is therefore not so unitary after all when it comes to damages claims.