Jurisdiction to hear an infringement action against the original seller who did not himself act in the Member State

TRADE MARK LAW – INTERNATIONAL PRIVATE LAW

Community trade mark regulation does not allow jurisdiction to be established to hear an infringement action against the original seller who did not himself act in the Member State where the court seised is situated
 

"38. In the light of the foregoing, the answer to Question 1 is that the concept of the ‘Member State in which the act of infringement has been committed’ in Article 93(5) of Regulation No 40/94 must be interpreted as meaning that, in the event of a sale and delivery of a counterfeit product in one Member State, followed by a resale by the purchaser in another Member State, that provision does not allow jurisdiction to be established to hear an infringement action against the original seller who did not himself act in the Member State where the court seised is situated."

No jurisdiction on the basis of the place where the event giving rise to the damage resulting from the infringement of that law occurred, for a court in that Member State where the presumed perpetrator who is sued there did not himself act there 
 

"59. In the light of the above considerations, the answer to Question 2 is that Article 5(3) of Regulation No 44/2001 must be interpreted as meaning that, in the event of an allegation of unlawful comparative advertising or unfair imitation of a sign protected by a Community trade mark, prohibited by the law against unfair competition of the Member State in which the court seised is situated, that provision does not allow jurisdiction to be established, on the basis of the place where the event giving rise to the damage resulting from the infringement of that law occurred, for a court in that Member State where the presumed perpetrator who is sued there did not himself act there." 

CTMR does allow jurisdiction to be established an act which caused or may cause damage within the jurisdiction of that court
 

"59. By contrast, in such a case, that provision does allow jurisdiction to be established, on the basis of the place of occurrence of damage, to hear an action for damages based on that national law brought against a person established in another Member State who is alleged to have committed, in that State, an act which caused or may cause damage within the jurisdiction of that court."

IPPT20140605, CJEU, Coty v First Note Perfumes

C360/12 - ECLI:EU:C:2014:1318