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International jurisdiction in online EU trade mark infringement cases:Where is the place of infringement located?
European Policy for Intellectual PropertyOxford, 3-5 September 2016
Eleonora Rosati
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Art 97 EUTMR – International jurisdiction
• Domicile/establishment of the defendant/claimant
• Where EUIPO has its seat
• (para 5) "in the courts of the Member State in which the act of infringement has been committed or threatened"
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Where is this place located in online TM infringement cases?
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Contents
1. Relationship between Art 97 EUTMR and Art 7(2) Brussels I recast
2. CJEU case law on jurisdiction in TM infringement cases
3. CJEU case law in online copyright infringement cases
4. Conclusion: place where the activation of the process for the technical display of infringing material on a certain website takes place
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1. Relationship between Art 97 and Art 7(2) Brussels I recast
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Article 7(2)
"A person domiciled in a Member State may be sued in another Member State … in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur.“
a) Place where the damage occurredb) Place of event giving rise to it
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Coty (2014)
• AG Jääskinen • Art 97(5) narrower than Art 7(2): doesn’t include place where damage occurred• Case law on Art 7(2) inapplicable although provisions have same rationale (close
connection for sound administration of justice)
• CJEU • Concept of "Member State in which the act of infringement has been committed … refers
to the Member State where the act giving rise to the alleged infringement occurred or may occur, not the Member State where that infringement produces its effects."
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2. CJEU case law on jurisdiction in TM infringement cases
• L’Oréal (2011)• CJEU appeared to suggest that intention to target, rather than accessibility, is required
to trigger the applicability of TM Directive and EUTMR• Applicable law, not jurisdiction
• Wintersteiger (2012)• National TM + Art 7(2)• Place of event giving rise to damage is place of establishment of infringer as this is
where activation of display process is decided
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3. CJEU case law in online copyright infringement cases
• Pinckney (2013)• Rejected targeting
• Hejduk (2015)• "the activation of the process for the technical display of the [infringing content] must
be regarded as the causal event. The event giving rise to a possible infringement of copyright therefore lies in the actions of the owner of that site".
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Conclusion• Place of infringement is where activation of process for technical display of
infringing material on a certain website takes place
• Helpful?• In most cases such place is likely to coincide with Ms where defendant
domiciled/established• Reduced choices for claimant
• Targeting may not be expressly required but for claimant to be able to rely effectively on Art 97(5) it would be necessary to demonstrate • not only that defendant has acted in that territory by activating the relevant display process, but also
that • activity at issue may be considered as having been directed to consumers on that specific territory.
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Thanks for your attention!
[email protected]@eLAWnora
E Rosati, ‘International jurisdiction in online EU trade mark infringement cases: where is the place of infringement located?’ (2016) 38(8) EIPR 482