Advocate General considers tricky jurisdictional questions over trade mark infringement

In the case of AMS Neve v Heritage Audio, the Advocate General has handed down a much awaited opinion on various questions referred for a preliminary ruling by the Court of Appeal on the issue of jurisdiction to hear claims relating to EU trade marks.

In the case of AMS Neve v Heritage Audio (Case C‑172/18), the Advocate General has handed down a much awaited opinion on various questions referred for a preliminary ruling by the Court of Appeal on the issue of jurisdiction to hear claims relating to EU trade marks.

Background

AMS Neve (AMS) has been selling 1073 branded pre-amplifiers for over 40 years. A Spanish entity, Heritage Audio, was selling cloned products also branded 1073 from their website. The website indicated that products could be bought from a UK distributor, suggested that direct orders could be placed with Heritage Audio anywhere in the EU and that Heritage Audio would ship the products.

AMS issued proceedings in the UK in the Intellectual Property Enterprise Court (IPEC) for infringement of its EU trade mark (EUTM) registration, its two UK national trade mark registrations and passing off. Heritage Audio subsequently applied for an order that the English courts did not have jurisdiction to try the claim.

In the IPEC, HHJ Hacon held that the IPEC:

(1) Had jurisdiction to decide the claims relating to the UK national trade mark registrations on the basis that the UK was where the damage caused by the tortious acts had occurred;

(2) Did not have jurisdiction to hear the claims relating to the EUTM registrations on the basis that only the courts of the member state in whose territory the defendant had put the infringing signs on the website had jurisdiction to hear the claim; and

(3) Had jurisdiction to hear the passing off claim which subsists through the UK common law.

(See our blog in December 2016 on IPEC's decision for more details.)

AMS appealed the decision to the Court of Appeal who, in turn, referred various questions to the CJEU.

The questions

The Court of Appeal asked, in circumstances where an undertaking is established and domiciled in member state A and 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:

1. Does an EUTM court in member state B have jurisdiction to hear a claim for infringement of the EUTM in respect of the advertisement and offer for sale of the goods in that territory?
2. If not, which other criteria are to be taken into account by that EUTM court in determining whether it has jurisdiction to hear that claim?
3. In so far as the answer to (2) requires that EUTM court to identify whether the undertaking has taken active steps in member state B, which criteria are to be taken into account in determining whether the undertaking has taken such active steps?

Advocate General's opinion

Advocate General Szpunar set out various general considerations before turning to the questions referred for a preliminary ruling. He stated that the criterion which enables the jurisdiction of EU trade mark courts to be established on the basis of Article 97(5) of EUTM Regulation No 207/2009 is the public targeted by that advertising and that offer for sale.  The fact that a website is aimed at the consumers and traders of a member state must be apparent, straight away, from the content of that website.  He gave a non-exhaustive list including:

• the fact that an offer and an advertisement refer expressly to the public of a member state,
• that they are available on a website with a country-specific top-level domain,
• that the prices are given in the national currency; or
• that telephone numbers on such a website contain the national prefix of the state concerned.

The AG concluded that in his opinion Article 97(5) of the  Regulation should 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.

Comment

It will be interesting to see whether the CJEU follows the opinion of the Advocate General, which is generally the position. With the increasing number of cross-border disputes involving EUTMs, it will be helpful for brand owners to have further clarity from the CJEU regarding the correct forum.