European Union trademark holders can bring actions against online advertisements and sales of infringing goods before the courts of each EU member state in which consumers are targeted, as an alternative to actions in the EU member state in which the defendant is based.

The ruling of the Court of Justice of the European Union (hereinafter CJEU) in case C-172/18 has confirmed that European Union trademark holders may also bring trademark infringement actions before the courts of each EU member state in which consumers are targeted by online advertisements and offers for sale of infringing goods, regardless of where the defendant is based and of where the server or actual goods offered for sale are located.

Facts in the case

UK-based company AMS Neve, that manufactures and sells audio equipment, brought proceedings before a UK Intellectual Property and Enterprise Court (UK IP Court) against Heritage Audio, an enterprise based in Spain. AMS Neve claimed that the defendant had offered for sale to consumers and advertised, in the UK, imitations of AMS Neve’s goods bearing a sign that infringed the complainant’s registered European Union trademark.

AMS Neve submitted screenshots from a website with offers for audio equipment bearing the allegedly infringing sign. The offers for sale were in English and the listed distributors included UK-based enterprises.

The UK IP Court held that according to the European Union Trademark Regulation No. 207/2009 (hereinafter the EUTMR), the court competent for actions against the infringement of EU trademarks is either the court of the jurisdiction in which the defendant is domiciled or, in the case of online sales, the court with jurisdiction over the place where the defendant decided to place the advertisement on line.

The decision was appealed and the Court of Appeal of England and Wales referred the case to

The CJEU was essentially asked to say whether the EUTMR allows the holder of a European Union trademark registration, who believes the trademark to have been infringed by an online sale advertisement published by a third party, to bring an infringement action before a court of the EU Member State in which consumers that are targeted by that advertisement are located, notwithstanding the fact that the third party made decisions and took steps to bring about the online advertisement in a different EU Member State.

The ruling

In its judgement in case C-172/18, issued on 5 September 2019, the CJEU found that under Article 97(1) EUTMR the complainant is to bring its action before the courts of the EU Member State in which the defendant is domiciled.

However under Article 97(5) EUTMR the complainant may bring its action “also before the courts of the EU Member State in which the act of infringement has been committed or threatened”. The ruling points out that where an action is brought on the basis of Article 97(5), the action is restricted to acts of infringement committed or threatened within the single Member State of the court before which the action is brought.

The CJEU took the view that the rationale of providing such an alternative forum – as well as of restricting that forum’s territorial jurisdiction – is to enable the holder of a European Union trademark to bring targeted actions, each relating to acts of infringement committed within a single EU Member State.

The ruling points out that Article 97(5) cannot be understood as meaning that the trademark owner may simultaneously bring actions based both on Article 97(1) and Article 97(5).

As for establishing which EU Member State has jurisdiction, the CJEU referred to its own decision in case C-324/09 of 12 July 2011 (L’Oréal) and held that in the case of online advertisements and sales, acts of infringement are committed in the territory where the consumers to whom the advertising and offers for sale are directed.

The CJEU has thus confirmed that a third party who infringes a registered European Union trademark by directing online advertising and offers for sale to EU consumers cannot avoid the enforcement of the trademark owner’s rights by relying on the fact that the third party is established elsewhere, that the server is located elsewhere and that the products advertised are located elsewhere.