The German Federal Court (“BGH”) ruled on 9 November 2017 that a German court does not have jurisdiction to decide on EU trade mark infringements, if infringing goods are displayed and sold on a website, which is operated from a member state of the EU other than Germany. According to the German Federal Court it is irrelevant in which country the website is available. The decisive fact is in which country the infringing act was initiated.

The claimant is the proprietor and exclusive licensee of various EU and IR trade marks for fragrances. In 2012 the claimant sent a warning letter to the defendant, an Italian perfume and cosmetic distributer. The defendant is an operator of an Italian country domain website with the option to show the content in German. If there is no option for online ordering the website contains contact details and includes a generalized description of the company. The defendant undertook not to import perfumes bearing the claimant’s marks, nor to offer, advertise or sell such perfumes, in Germany, unless the claimant agreed to those actions. Nevertheless the defendant sold 150 perfumes bearing the claimant’s marks without permission to a German company. The defendant handed over the goods in Italy after full payment to a forwarding agent assigned by the buyer. The perfumes were delivered to and stored in Germany.

The claimant commenced an action in Germany, arguing that those acts infringed its trade mark rights, because the perfumes were put on the EU market without its permission. The defendant argued that there is no international jurisdiction of German courts and claimed that correspondence was only carried out by e-mail: The buyer contacted the defendant by e-mail and the defendant informed him about the stock and price of the requested products also via e-mail.

The Regional Court rejected the appeal on the grounds of lack of international jurisdiction, whereas the Court of Appeal decided that the German national courts have jurisdiction. On further appeal, the BGH then had to rule on international jurisdiction of German courts in relation to EU trade marks as well as in relation to IR trade mark cases protected in Germany.

In its decision of 9 November 2017 the BGH annulled the judgment of the Court of Appeal in respect of EU trade marks. The BGH considered that German courts do not have jurisdiction to rule on EU trade mark infringements pursuant to Art 97(5) Regulation (EC) No. 207/2009 (now Art 125 (5) (EU) 2017/1001). According to 125 (5) (EU) 2017/1001 proceedings may be brought in the courts of the member state in which the act of infringement has been committed or threatened. Therefore the decisive factor is in which EU member state the infringing act primarily was initiated. It is irrelevant in which member state the harmful event occurred or may occur. If the infringing act was committed or threatened in different EU member states the BGH requires an overall assessment of the acts to determine the original infringement.

According to the BGH the Italian country domain website with an option to show the content in German does not support the assumption of an infringing act in Germany. The BGH argued that the place where the infringing act was committed is not the EU member state in which the website can be accessed, but rather the member state in which the infringing act was initiated (in the present case: Italy). Also, the fact that the defendant sent an e-mail about the stock and price of the products to Germany does not have the effect of conferring German jurisdiction. Once more the decisive factor is the EU member state from which the e-mail was sent.

However, according to the BGH, the situation is quite different with regard to IR trade marks protected in Germany. In those cases German jurisdiction is conferred, because the jurisdiction is determined by Art 5 No. 3 Brussels Regulation (now Art 7 No. 2 Brussels Regulation). According to Art 7 No. 2 Brussels Regulation jurisdiction is conferred in the member state where the harmful event occurred or may occur. In the present case the claimant claimed an infringement of a trade mark which is protected in Germany. Therefore German jurisdiction is conferred.

This decision makes it more difficult to bring EU trade mark infringements in cases of cross border infringements before German courts. In each case it needs to be carefully analysed in which country the initiating acts of infringement were started and if national trade marks can be relied upon to claim jurisdiction.

Case Ref: BGH, 9 November 2017 – (I ZR 164/16)