HHJ Hacon has issued a decision on a preliminary point concerning jurisdiction in a trade mark infringement and passing off action. He has held that the IPEC has jurisdiction in respect of the action for UK trade mark infringement and passing off, but not in respect of the action for EUTM infringement.

AMS Neve (“AMS”) is a manufacturer of audio equipment whose products include the well-known “1073” microphone pre-amplifier. When the Spanish company Heritage Audio (“Heritage”) started producing a similar product, also branded “1073”, AMS Neve commenced proceedings in the IPEC for trade mark infringement and passing off.

The trade mark infringement claim was based on an EUTM for the digits 1073 and two UK registrations for logos incorporating a stylised sine wave (all registered for various audio equipment goods in class 9). AMS alleged that Heritage offered for sale and sold equipment by reference to identical or similar signs in the United Kingdom, amongst other places.

Heritage proceeded to challenge the English courts’ jurisdiction to hear the claim, on the basis that Heritage was established in Spain and all the actions at issue had occurred in Spain.

UK trade mark infringement and passing off

HHJ Hacon noted that the rules on jurisdiction for infringement of national trade marks and for passing off are governed by the Brussels I Regulation. He explained that, whilst the general rule in Article 4 of Brussels I is that actions should be heard in the EU Member State in which the defendant is domiciled, broad exceptions apply. In particular, under Article 7(2) of Brussels I, a person domiciled in a Member State may be sued in matters relating to tort (which includes trade mark infringement and passing off) “in the courts for the place where the harmful event occurred or may occur”.

The judge therefore considered whether this “harmful event” criterion applied in the present case. Referring to CJEU case law, he held that it was well-established that the “place where the harmful event occurred” would include (a) the place where the damage occurred and (b) the place of the event giving rise to the damage.

In relation to the place where the damage occurred, he considered Wintersteiger (Case C-523/10), Pinckney (Case C-170/12) and Coty v First Note (Case C-360/12) and interpreted these decisions to mean that, in the context of an IP infringement, the place where the damage occurred would include the Member State in which the relevant IP right subsists. He considered that it was up to the national court to decide whether damage had occurred in that Member State. In relation to the place of the event giving rise to the damage, and again considering Wintersteiger, he concluded that this was not limited to the place in which an entity which advertised goods online was established. This was because the relevant acts (including, for example, choosing an online keyword) could take place elsewhere; what mattered was identifying the place most likely to facilitate the taking of evidence and the conduct of the proceedings.

On the evidence, the judge accepted that AMS had a good arguable case for the proposition that Heritage advertised and offered for sale in the UK goods under the relevant signs. He therefore held, based on the principles laid out in L’Oreal v eBay (Case C-324/09), that the English courts had jurisdiction to hear the UK trade mark infringement claim since Heritage’s website was not merely accessible from the UK but actively targeted English customers (amongst others).

In relation to passing off in particular, HHJ Hacon concluded that the relevant right existed in England (i.e. where the goodwill resides) and it was therefore for the English courts to decide if there had been an actionable misrepresentation. He accordingly held that the English courts had jurisdiction in respect of the claims for UK trade mark infringement and passing off.

In addition to its claim against Heritage, AMS had argued that Mr Arribas, director of Heritage, was liable as a joint tortfeasor. HHJ Hacon rejected Heritage’s argument that this depended on Spanish law. He held that the question of whether one party is jointly liable with another for acts of infringement of trade marks and/or passing off in England can be determined only by reference to English law and the relevant facts.

EUTM infringement

HHJ Hacon noted that, unlike the rules for infringement of national trade mark registrations, the jurisdiction rules for proceedings concerning infringement of EUTMs are governed by the EU Trade Mark Regulation (“EUTMR”). As with Brussels I, the general rule under Article 97(1) EUTMR is that actions should be heard in the EU Member State in which the defendant is domiciled. The relevant exception under Article 979(5) EUTMR is that such defendants may alternatively be sued in “the Member State in which the act of infringement has been committed or threatened”.

The judge considered the CJEU’s judgment in Coty and held that the CJEU had drawn a conscious distinction between, on the one hand, the event of taking a decision or steps to put a sign on a website and, on the other hand, the event of the display of the sign on a website. Only the courts of the place where former event(s) occurred would have jurisdiction. On the facts, he held that the actions that resulted in Heritage’s website being targeted at UK customers took place in Spain. On that basis, he concluded that the English courts did not have jurisdiction to hear the claim for EUTM infringement.

Comment

This decision highlights the different rules of jurisdiction set out, on the one hand, in the Brussels I Regulation (applicable to infringement of national trade marks and passing off) and, on the other hand, the EUTMR (applicable to EUTM infringement).

HHJ Hacon recognised that there may be some procedural inefficiency in having courts of different EU Member States hearing separate claims for national trade mark infringement and EUTM infringement. In such cases, brand owners are unlikely to welcome the need to incur the time and costs of pursuing proceedings in multiple jurisdictions. However, in the present case, the judge was not convinced that there was any provision of Brussels I or the EUTMR that would permit consolidation. Nor was he convinced that there was any risk of irreconcilable judgments (it is unclear whether his position would have been different had the EUTM and UK registrations been for the same sign).

It remains to be seen whether AMS will seek to delay any Spanish proceedings (in respect of the EUTM) pending a decision in the IPEC regarding infringement of the UK national marks and passing off. However, absent settlement, it is likely that AMS will need to pursue EUTM infringement proceedings should its ultimate aim be a pan-European injunction.

Case – AMS Neve Ltd & Ors v Heritage Audio S.L. & Anor [2016] EWHC 2563 (IPEC)