A national court’s competence to decide on European Union Trademark (EUTM) infringements does not follow from online activities targeting the respective court’s country (German Federal Supreme Court, judgment of November 9, 2017, case I ZR 164/16 – Perfume Marks).
According to Art. 125 (5) European Union Trademark Regulation (EUTMR), actions for infringement of EUTMs may, inter alia, be brought in the courts of the EU member state in which the act of infringement has been committed. When being confronted with infringing activities performed via the Internet, the German EU trademark courts applied this rule in a liberal manner. They confirmed their international competence if the respective online presence was at least also targeted at the German public. Availability of a German version of the content, terms for shipment to Germany, or contact information specifically for German internet users were usually sufficient for successfully bringing an infringement action in the German courts.
Following the findings of the Court of Justice of the European Union in a recent judgment relating to a Registered Community Designs (judgment of September 27, 2017, joined cases C-24/16 and C-25/16 Nintendo v BigBen Interactive), the German Federal Supreme Court now explicitly abandoned this string of previously well accepted case law. It held that, when correctly applying Art. 125 (5) EUTMR, one and the same act of infringement can only be committed in one member state. It is decisive where the infringer performs his infringing activities and not in which countries the infringement develops its effects. An infringement via an Internet website is thus committed at the place where the infringing online content was made publicly available. This is usually the website operator’s place of business.
This decision is very important as more and more trademark infringement proceedings in Germany are based on EUTMs. In the future, it will be very difficult to bring EUTM infringement actions before the German courts if they concern online activities performed by parties having their place of business outside of Germany.
Notably, the newly found limitations of the national courts’ competence only apply to the infringement of EUTMs and not to national trademarks. It is still be possible to sue a foreign online infringer in Germany on the basis of German trademarks if the respective online presence is at least also targeted at the German public (German content available, German contact information, German shipment conditions, etc.). From now on, online trademark infringements thus constitute another area in which national trademarks provide a strategic advantage over EUTMs.