Jurisdiction in relation to EU Trademark infringement committed in the Internet

Friday, 25 of October of 2019

Last 5 September 2019, the CJEU adopted its decision in AMS Neve in relation to a EU trademark infringement in the Internet. The decision adopts the so-called "directing activities" doctrine to determine the courts with jurisdiction in accordance with present 125.5 EUTR.

In particular, the decision states that:

the proprietor of a European Union trade mark who considers that his rights have been infringed by the use without his consent, by a third party, of a sign identical to that mark in advertising and offers for sale displayed electronically in relation to products that are identical or similar to the goods for which that mark is registered, may bring an infringement action against that third party before a European Union trade mark court of the Member State within which the consumers or traders to whom that advertising and those offers for sale are directed are located, notwithstanding that that third party took decisions and steps in another Member State to bring about that electronic display”.

The decision shall be welcome for two reasons. Firstly, it rectifies the interpretation adopted in CJEU Judgment sentencia “Coty Germany that considers that art. 125.5 EUTR exclusively grant jurisdiction to "the Member State where the act giving rise to the alleged infringement occurred or may occur".

Secondly, it deviates from the case law established in CJEU Judgment “Wintersteiger” on the interpretation of Art. 7.2 R. Brussels I in case of national trademark infringements. Such decision establishes that the mere accessibility of a web site from a Member State where the trademark is registered in enough for the courts of that Member State to declare jurisdiction. This case law has been severely criticised by scholars because it generates legal uncertainty and harms defendant's due process right.

To sum up, the fact that the CJEU has abandoned the mere accesibility criteria for EU trademark litigation is to be welcome. Time will tell if this is also the case for litigation of national trademarks since, at present, the existence of different interpretative criteria for art. 125.5 and art. 7.2 generate legal uncertainty in particular in those cases where the complaint refers to the infringement of both a EU trademark and its parallel national trademark.