In the event of an alleged infringement through online advertising, the proprietor of a EU trade mark may bring an infringement action against a third party before the national trade mark court where the target audience of the infringing online advertisement is located.
The present case concerns an action for infringement of a Union trade mark against a third party who has used signs identical to or similar to that EU trade mark in online advertisements. The action was brought before a court in the United Kingdom, which held that it lacked jurisdiction to hear the action, considering that the court having territorial jurisdiction is the court of the place where the third party took the decision advertise and offer for sale on that website and took steps to implement that decision.
Article 97(1) of Regulation (EC) No 207/2009 (old) stated that in trade mark infringement proceedings, the courts of the Member State in which the defendant is domiciled or the Member State in which he has an establishment shall have jurisdiction. Paragraph 5 of this Article states that trademark infringement proceedings - with the exception of actions for a declaration of non-infringement - may also be brought in the courts of the Member State in which the act of infringement has been committed. This Regulation has been replaced by 2017/1001 and Article 97 corresponds to Article 125. This article concerns actions each of which relates to acts of infringement committed within a single Member State.
The Court holds that, where the infringing acts consist in the electronic display of advertisements and offers to sell for goods bearing a sign infringing a EU trade mark, it must be held that those acts were committed in the territory where the target group of the advertisements is located, even that the products that are the subjects of these advertisements and offers for sale are located elsewhere. If the wording 'Member Stat in which the act of infringement has been committed' is interpreted as meaning that it refers to the courts of the Member State in which the display of the (online) advertisements and offers for sale are activated have exclusive jurisdiction, no proceedings are open to the proprietors of infringed EU marks before any other alternative forum. In order to prevent those proprietors of infringed EU trade marks from resorting an alternative forum, the infringer would have to do no more than ensure that the territory where the advertising and offers were placed online corresponds to that in which the infringers are established. In addition, the applicant may also find it excessively difficult, if not impossible, to ascertain where the defendant took the decisions and technical steps to have his advertisements and sales offers activated.