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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

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"

Where is this place located in online TM infringement cases?

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

1. Relationship between Art 97 and Art 7(2) Brussels I recast

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

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."

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

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".

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.

Thanks for your attention!

eleonora@e-lawnora.com@eLAWnora

E Rosati, ‘International jurisdiction in online EU trade mark infringement cases: where is the place of infringement located?’ (2016) 38(8) EIPR 482