In a decision of November 9, 2017 (I ZR 164/16, perfume trademarks), the German Federal Supreme Court (BGH) ruled on the international jurisdiction of (German) courts under Art. 97 (5) European Union Trademark Regulation 2007/2009 (EU TMR) (now Art. 125 (5) European Union Trademark Regulation 2017/1001, EU TMR 2017/1001) in a case of alleged EU trade mark infringement. The BGH held that national (German) courts do not have international jurisdiction for EU trade mark infringement claims where (i) an online merchant based in a foreign EU member state (Italy) offers goods, (ii) through its foreign operated website (Italy), (iii) in breach of EU trade mark rights, (iv) to customers based in the member state where jurisdiction is asserted (Germany).
Summary of the case
The claimant, Coty Inc. (Coty), is a US-based “world leading beauty company making cosmetic, skincare, fragrances, hair color and styling brands loved by many”, to use its own words (www.coty.com), and the owner or exclusive licensee of various high-end EU and international (IR) trade marks for perfumery. The defendant, Zacobi S.p.A., Parma (Zacobi), is a distributor of fragrances (perfumes), cosmetics, hair care products and toiletries in Italy and abroad (www.zacobi.it).
Coty took issue with Zacobi’s displaying brand names and pictures of perfumes bearing its EU and IR trade marks on its online store without its authorization. Zacobi’s website is tied to an Italian country code top-level domain (.it) and does not provide any online ordering option, price list or terms of sale. However, the website offers a German language option and contact details of Zacobi in Vicofertile, Parma.
Following a written notice by Coty, Zacobi undertook not to import perfumes bearing Coty’s trade marks, nor to offer, advertise or sell such perfumes in Germany, unless these had first been put on the market in the EU/EEA with Coty’s authorization.
In spite of its undertaking, Zacobi sent inventory and price-related information regarding perfumes with the Coty trademark Davidoff via email to a prospective buyer located in Germany. The buyer subsequently ordered 150 such perfumes from Zacobi. Zacobi handed over the goods in Italy to a delivery company commissioned by the buyer in Germany. The goods were delivered to the buyer and stored at its warehouse in Germany.
Coty deemed the foregoing acts to constitute infringements of its EU and IR trade mark rights and therefore initiated proceedings against Zacobi in Germany. Zacobi argued that German national courts lacked jurisdiction. This view was followed by the Regional Court (Landgericht München), which dismissed Coty’s action for lack of international jurisdiction. On appeal, the Court of Appeal (Oberlandesgericht München) found the suit to be admissible and confirmed the international jurisdiction of the German national courts. On further appeal, the German Federal Court (BGH) partly reversed the Court of Appeal’s decision, denying the international jurisdiction of the German national courts in respect of the EU trade mark, but confirming the jurisdiction of the German national courts for the IR trade mark.
International jurisdiction under Art. 97 (5) EU TMR
Article 97 (1) and (2) EU TMR (now Art. 125 (1) and (2) EU TMR 2017/1001) provide for the general place of jurisdiction at the domicile/establishment of the defendant (which in this case would be Italy) and alternatively, where the defendant does not have a domicile/establishment in the EU/EEA, at the domicile/establishment of the claimant (which in this case would be the US). In addition, Article 97 (5) EU TMR (now Art. 125 (5) EU TMR2017/1001) also provides that, inter alia, infringement actions in respect of threatened infringement relating to Community trade marks “may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened”.
Thus, under para. (5), the basic connecting factor for determining international jurisdiction is the place where the alleged infringing act was committed or threatened (“Handlungsort”). The place where the harmful event occurred or may occur (“Erfolgsort”), however, is irrelevant and does not constitute an alternative place of jurisdiction.
Decisive connecting factor: the place where “the act of infringement has been committed or threatened”
As the BGH points out, disputes over infringements of IP rights often involve multiple infringing acts. This, in turn, means that harmful events may occur in different EU member states. In such cases – including the present one – the question arises as to what infringement act(s) is/are relevant to determine where the place of infringement is pursuant to Article 97 (5) EU TMR.
Following the BGH’s view, in the case of multiple infringing acts, the decisive connecting factor to determine the special place of jurisdiction is the initial infringing act that set the basis for the illicit conduct.
The BGH determined that the sale of the perfumes infringing on Coty’s EU trade marks had in fact been initiated with the roll-out of Zacobi’s German language website. Thus, the BGH determined that the place of the initial infringing act was the place where the activation of the technical process for the display of the infringing trade marks on Zacobi’s website had taken place. This place is the place where the defendant (as website operator) was established (in this case Italy).
No jurisdiction based on sole accessibility of website in Germany
In the BGH’s view, the fact that the defendant operated a website that was accessible to, and targeted, an audience located namely in Germany was not a sufficient factor for German national courts to assert international jurisdiction over the dispute at issue.
The question as to whether or not the infringing goods could be directly ordered through the website was not deemed relevant. In this respect, the BGH held that, even if the option to order the perfumes through the website had existed, this would not have automatically established the international jurisdiction of the German national courts.
This, in the BGH’s view, followed from the decision of the Court of Justice of the European Union (CJEU) of September 27, 2017 (C-25/16 – Nintendo v BigBen Interactive; see MLL-News of October 30, 2017 (german)), where the CJEU had determined that, where an infringing reproduction of a registered Community design is offered for sale via a website that is directed at consumers in and accessible from various member states of the EU/EEA, the relevant place for determining the applicable law in accordance with Article 8 (2) of the Regulation (EC) No 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations (Rome II) is the place where the website operator activated the process of putting the offer for sale of the infringing reproduction online.
The Nintendo v BigBen decision was cited by the BGH notwithstanding the fact that the CJEU in the cited paragraph of its decision dealt with applicable law, not with the place of jurisdiction, and in other paragraphs applied a very liberal stance with regard to jurisdiction. While Article 97 (5) (now Art. 125 (5)) EU TMR (place of jurisdiction) and Article 8 (2) Regulation (EC) No 864/2007 (Rome II, applicable law) may contain a similar wording, they regulate very different matters.
Nintendo v BigBen, in turn, relies on the finding of the CJEU in the case C-360/12 of 5 June 2014 – Coty Germany, where the CJEU held that for Article 95 (5) EU TMR to provide for jurisdiction in another member state than the member state of domicile of the alleged infringer, an “active conduct on the part of the person causing the infringement” is required (item 34), and a mere effect does not suffice (item 35).
No jurisdiction based on sole dispatching of emails to Germany
The BGH also noted that the sole dispatching of information via email regarding the goods at issue to a buyer located in Germany did not trigger the jurisdiction of the German national courts. Rather, the place where the initial infringing act took place had to be considered, which was the place where the emails were sent from (Italy).
Jurisdiction for national trade marks: place where “the damaging event occurred or may occur”
Contrary to its finding regarding EU trade marks, the BGH deemed that a sufficient connecting factor existed for German national courts to assert international jurisdiction over the IR trade mark infringement claim.
Claims based on national trademarks are subject to Article 5 No. 3 Brussels Regulation (now Art. 7 No. 2 Brussels Regulation), which confers special jurisdiction in the EU member state in which the harmful event occurred (or may occur) (“Erfolgsort”).
Such event is deemed to take place in the member state in which the national trade marks are protected, which, in casu, was Germany, since the relevant IR trade marks were protected in Germany.
By limiting international jurisdiction over EU trade mark infringement claims to the place where the website with the infringing offers is being operated, the BGH effectively limits the claimants’ options regarding its choice of forum for an infringement suit, including a request for preliminary injunction.
For a claimant to be in a position to rely on Article 97 (5) EU TMR (now Art. 125 (5) EU TMR) for establishing jurisdiction outside the member state of the domicile of the infringer which offers goods infringing EU trade marks on its website, the claimant would have to demonstrate that the defendant committed specific acts in that other EU member state. In our view, shipment through a delivery company commissioned by the seller, maintenance of a show-room or retention of a sales agent in such other jurisdiction, or any similar acts, would constitute such specific acts, so that a sale to private consumers would normally be covered by the scope of said provision.
Accordingly, the BGH’s decision weakens the protection of EU trade marks, as compared with national trade marks, in that it makes it more difficult to initiate EU trade mark infringement actions before national courts outside the place of domicile of the infringer. This is particularly true for countries with a proven and efficient enforcement system, such as Germany or the Netherlands.
More generally, this decision could affect registration strategies, because national trade marks may provide a strategic advantage over EU trade marks since the limitations to jurisdiction only apply to the claims for infringement of EU trade marks – not national IR trade marks. Thus, an action could be brought against a foreign online trade mark infringer in Germany with respect to a trade mark if that trade mark were also protected in Germany as national trademark.
In the same vein, an infringement action in Switzerland, which obviously can only be based on a national trademark, and not on a EU trademark, could be the only way forward for a rightsholder which would not have any national trademark rights in the EU. Switzerland is not an EU member state, and infringement actions based on a national Swiss trademark can always be brought at the place where the harmful event occurred (“Erfolgsort”).
While deciding a jurisdictional issue, the BGH refers to a principle defined by the CJEU in relation to an applicable law matter and drawn from the Coty Germany decision, which was decided on the basis of very different circumstances. It is doubtful whether this complies with EU law and would be upheld by the CJEU.
It is incidentally worth noting that the BGH’s decision also implies that in such situations, jurisdiction would be approved at the place where the allegedly infringing act originated, even if the allegedly infringing activities of the defendant where not directed at customers located in that member state.