Joanna Adcock considers a recent opinion by the Advocate General about whether the brand owner can sue in the Member State at which a website is targeted.
Advocate General Szpunar has given an opinion in the matter of AMS Neve Ltd & Others –v- Heritage Audio & Another[i] which involves a UK based company (AMS Neve), which makes and sells audio equipment and is the exclusive licensee of one EU trade mark and two UK trade marks. Heritage Audio SL (“Heritage”) is a Spanish based company, which sells audio equipment.
Proceedings commenced against Heritage in the English court
In October 2015, AMS Neve and the licensors of the trade marks (the “Claimants”) brought proceedings against Heritage and its director (the “Defendants”) in the UK Intellectual Property Enterprise Court (IPEC) for infringement of the three trade marks and passing off.
The Claimants complained that the Defendants had offered for sale to consumers in the UK imitations of AMS Neve’s products bearing or referring to signs identical or similar to the EU trade marks and UK trade marks. They relied among other things on the Heritage website and, in particular, on screenshots showing audio equipment bearing identical/similar marks; the fact it was in English; the fact that its terms of sale stated they would accept orders from any EU Member State and that the “Where to buy” section included details of a UK distributor.
The Defendants objected to the jurisdiction of the English Court
The Defendants made an application for a declaration that the English courts had no jurisdiction to try a claim for trade mark infringement against a Defendant based in Spain. The IPEC rejected the Defendants’ application to the extent that the claim concerned infringement of the UK trade marks and passing off. However, it allowed the application to the extent it concerned the EU trade mark. Focussing on the Heritage website and jurisdiction provisions in Article 97(5) of the EU Trade Mark Regulation 207/2009 which are based on the place where the act of infringement has been committed or threatened, it held that only the courts of the Member State on whose territory the Defendants had taken steps to put the signs in question on the website (or taken decisions to that effect) had jurisdiction to examine the infringement claim with respect to the EU trade mark – in this case this was Spain.
Jurisdiction question referred to the CJEU
AMS Neve appealed and the Court of Appeal subsequently stayed the proceedings and referred the jurisdiction question to the Court of Justice of the European Union (CJEU). Advocate General Szpunar conducted a detailed analysis of the various regulations and relevant case law before proposing that an interpretation be developed specifically for Art 97(5) and providing some guidance on this. He concluded that Article 97(5) must be interpreted as meaning that, in circumstances where an undertaking which is established and domiciled in Member State A has taken steps in that territory to advertise and offer for sale goods under a sign identical to an EU trade mark on a website targeted at traders and consumers in Member State B, an EU trade mark court in Member State B has jurisdiction to hear an action for infringement of the EU trade mark in respect of the advertisement and offer for sale of goods in that territory.
Targeting must be immediately apparent
He proposed that the courts of a Member State (in this case the UK) would have jurisdiction if the fact that a website is aimed at the consumers and trade of that Member State is apparent straight away from the content of that website. There were also other factors of particular importance when determining jurisdiction:
- the fact that an offer and an advert refer expressly to the public of a Member State;
- that they are available on a website with a country specific top level domain of that Member State;
- that the prices are given in the national currency;
- that telephone numbers of such a website contain the national prefix of the State concerned.
A non-exhaustive list
This list is neither exhaustive nor exclusive and the Advocate General went on to indicate that an offer for sale providing details regarding the geographic areas to which the seller is willing to dispatch the goods may also play a significant role in determining jurisdiction provided that it is not a general indication which covers the whole of the EU. He also cast doubt over the fact that a website is written in a language that is widely understood in a Member State might be of importance as a website could be in a different language but still targeted at, for example, a community of foreign nationals residing in that Member State.
With regard to this particular claim, the AG concluded, however, that with the exception of a list of distributors in various countries (including the UK), these being economic operators which are independent of the defendants in the proceedings, together with their mailing addresses and website addresses, there was nothing to indicate that the Heritage website was specifically targeted at consumers in the UK. Such information regarding a distributor is not sufficient in itself to establish the jurisdiction of the UK courts on the basis of Art 97(5). The claim does not concern acts of that distributor but those of the defendants on their website.
Trade mark owners will be relieved that the AG has opted for a solution to the jurisdiction question for EU trade marks under Art 97(5) which is based on whether the website is targeted at consumers and traders in the relevant Member State. This is in line with the approach taken by the English courts in relation to infringement of a UK trade mark online and a concept with which business is becoming familiar. We hope (and expect) that the CJEU will adopt this solution too. Post Brexit (and post any transition period) EU trade marks will, of course, no longer be enforceable in the UK at all, but this issue will remain relevant to UK businesses operating online in the EU27.
[i] EU Case C-172/18