“These Germans are crazy” – it is something to this effect that the judges of the European Court of Justice (ECJ) may have thought when they now corrected the 2017 jurisdiction of the German Federal Court of Justice (Parfummarken). Upon submission by the Court of Appeal (England & Wales), the ECJ has now clarified in a September 5, 2019 judgement (C-172/18 - AMS Neve v. Heritage Audio) that a trademark infringement action can be brought before a EU trademark court in the Member State where the consumers or traders to whom the infringing online advertising and the offers for sale are directed are located. Even though the ECJ is maintaining its 2014 ruling in the Coty Germany case that there is no jurisdiction for EU trademark infringements at the place where the harm arose and that active conduct of the trademark infringer in the Member State is required. According to the CJEU, however, the electronic display of advertising and offers for sale does constitute such an active conduct. It is irrelevant where the infringer is located or where the server or the products that are the subject of such advertising and offers for sale are located.

The ECJ decision is particularly important for owners of EU trademarks domiciled in Germany. In its decision “Parfummarken” the German Federal Court of Justice held that, in the case of online offers for sale that are infringing the EU trademark, even distribution efforts by the infringer relating to Germany were not sufficient to affirm the international jurisdiction of German courts. The jurisdiction would not be governed by the place where the website can be accessed, but solely where the publication of the offer for sale on the website was initiated. Thus, the German Federal Court of Justice had de facto abolished the jurisdiction of the place of infringement for EU trademarks. At the same time, it had decided that the German courts would remain competent for national trademarks.

The case now decided by the ECJ is almost identical to the decision of the German Federal Court of Justice (Parfummarken): The plaintiffs, established in the United Kingdom, are proprietors or licensees of various EU trademarks for audio devices. The defendant, established in Spain, operates a website in English where it offers audio devices for sale by using the trademarks for which infringement is claimed. The defendant supplies the products to the UK and even published a list of UK distributors where the defendants’ products are available. The plaintiffs claimed an infringement of EU trademarks in the United Kingdom and the jurisdiction of the UK court. Rightly so, as the ECJ now held.

As a result, EU trademark owners have the possibility to bring an action at the place where the infringer is domiciled or established. Alternatively, according to the ECJ, an infringement action may also be filed in the Member State in which the by the online offers targeted consumers and traders are located. Thus, with respect to EU trademarks, the Court of Justice confirms the place of jurisdiction where the infringing act takes place.

Tip for the practice: In consideration of the ruling of the German Federal Court of Justice, in the past German owners of intellectual property rights had to rely on national trademark registrations to obtain effective legal protection in cross-border litigation matters in the EU. The clarifying decision of the European Court of Justice now largely eliminates the discrimination of EU trademarks compared to national trademarks and entails legal certainty. In the case of cross-border online offers for sale, owner of EU trademarks can now again bring infringement actions before German courts against companies located in other EU Member States. While foreseeable infringement success is sufficient for German trademarks, for EU trademarks it is necessary to make sure that the infringer has communicated to Germany. It is also for this reason that the filing of German trademarks in addition to EU trademark applications continues to be recommended.