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.
A private Facebook account user is a consumer within the meaning of Article 15 of Brussels I Regulation, even when his activities entail publishing books, lecturing, operating websites, fundraising and being assigned the claims of numerous consumers for the purpose of their enforcement. Consumer cannot start a collective action at the forum actoris on the basis of Article 16(1) of Brussels I Regulation: an applicant who is not himself a party to the consumer contract in question cannot enjoy the benefit of the jurisdiction relating to consumer contracts.
The condition laid down in Article 109(1)(a) of the EU Trade Mark Regulation as to the existence of the ‘same cause of action’ applies only in so far as those actions relate to an alleged infringement of a national trade mark and an identical EU trade mark in the territory of the same Member States. Where actions for infringement, the first on the basis of a national trade mark concerning an alleged infringement within the territory of a Member State and the second on the basis of an EU trade mark concerning an alleged infringement in the entire territory of the European Union, are brought before the courts of different Member States between the same parties, the court other than the court first seised must decline jurisdiction in respect of the part of the dispute relating to the territory of the Member State referred to in the action for infringement brought before the court first seised. The court other than the court first seised is not required to decline jurisdiction in favour of the court first seised if the actions in question no longer relate to the territory of the same Member States or if the trade marks concerned are not identical and valid for identical goods or services.
Article 22(4) of Council Regulation (EC) regarding proceedings concerned with the registration or validity of an intellectual property right is not applicable to disputes about whether a person is entitled to be registered as a proprieter of a trade mark
A legal person claiming that its personality rights have been infringed by the online publication of incorrect information and failure to remove comments can bring an action for rectification of that information, removal of those comments and compensation of all the damage sustained before the courts of the Member State in which its centre of interests is located. The centre of interests must be determined by reference to the place where the main part of the economic activities take place: the location of the registered office is not conclusive. A person who alleges that his personality rights have been infringed by the online publication of incorrect information concerning him and the failure to remove comments cannot bring an action for rectification of that information and removal of those comments before the courts of each Member State in which the information published on the internet is or was accessible: this is a single and indivisible application that can, consequently, only be made before a court with jurisdiction to rule on the entirety of an application for compensation for damage.
The Community design court can, in cases where the jurisdiction towards one defendant is based on Article 82(1) Community Designs Regulation (CDR) and jurisdiction towards a second defendant established in another Member State is based on Article 6(1) Brussel 1 Regulation and Article 79(1) of the CDR, because the second defendant makes and supplies goods to the first defendant, adopt orders concerning measures falling under Article 89(1) and Article 88(2) CDR also covering the second defendant’s conduct other than that relating to the supply chain and with a scope which extends throughout the European Union. Concept “country in which the act of infringement was committed” from Article 8(2) Rome II Regulation refers to the country where the event giving rise to the damage occurred. Where the same defendant is accused of various acts of infringement in various Member States, the correct approach for identifying the event giving rise to the damage is not to refer to each alleged act of infringement, but to make an overall assessment of that defendant’s conduct in order to determine the place where the initial act of infringement at the origin of that conduct was committed or threatened by it.Third party that, without consent of the holder of rights of a design, uses images of goods corresponding to a Community design when lawfully offering for sale goods intended to be used as accessories to specific goods of the holder of the rights of those designs in order to explain the joint use of the goods thus offered for sale and the specific goods of the holder of those rights, carries out an authorised “reproduction for the purpose of making citations” within the meaning of Article 20(1)(c) CDR, as long as it fulfils the cumulative conditions laid down therein, provision provided that it fulfils the cumulative conditions laid down therein, which is for the national court to verify.
IPPT20170518, CJEU, Hummel v Nike
A legally distinct second-tier subsidiary, with its seat in a Member State, of a parent body that has no seat in the European Union is an ‘establishment’, within the meaning of that provision, of that parent body if the subsidiary is a centre of operations which, in the Member State where it is located, has a certain real and stable presence from which commercial activity is pursued, and has the appearance of permanency to the outside world, such as an extension of the parent body.
IPPT20160421, CJEU, Austro-Mechana v Amazon
All actions which seek to establish the liability of a defendant are the concept of ‘matters relating to tort delict of quasi-delict’. A claim seeking to obtain ‘fair compensation’ for reprographic reproduction or reproduction for private use due by virtue of national law falls within ‘matters relating to tort, delict or quasi-delict’, within the meaning of Article 5(3) of that regulation.
Judge Member State wherein allegedly infringing website can be consulted, competent as judge of place where damage occurred. Seised court has jurisdiction only in regard of damage caused in own Member State.
Jurisdiction: a court of Member State within which damage is caused, where supposed perpetrator did not act, has jurisdiction only to rule on damage cause within territory of Member State to which it belongs
IPPT20131003, CJEU, Pinckney v Mediatech
Jurisdiction: court of the location where the damage as a result of copyright infringement has taken place only has jurisdiction to determine the damage caused in the state which it is situated.
Possibility of irreconcilable judgments (article 6 EEX Convention) if companies are each separately accused of infringement of same national part of European patent with same product. Exclusive jurisdiction regarding validity does not preclude special jurisdiction regarding interim measures
Actions relating to trade mark infringement by use of Adwords may be brought before courts of Member States in which the trade mark is registered or of the place of establishment of the advertiser
Connected claims: risk of irreconcilable judgments. Intellectual creation and scope of protection: portrait photograph. Newspaper publisher may not use of their own volition a work protected by copyright by invoking an objective of public security. Right to quote: not required that press report quoting a work is itself protected by copyright; obligation to indicate the source, including the name of the author or performer.
Court of place in which publisher of online content is established or in which the centre of his interests is based has full jurisdiction in respect of all damages. Court of territory of which online content was accessible only has jurisdiction in respect of damage caused in that territory. Member States to ensure that provider of an elec-tronic commerce service is not subject to stricter requirements than in the state in which it is established
Community trade mark: as a rule European wide prohibition, unless use does not affect the functions of the trade mark. Prohibition extends, as a rule, to the entire area of the EU. Limitation of territorial scope required in case the use of the sign at issue does not affect or is not liable to affect the functions of the trade mark, for example on linguistic grounds. Periodic penalty payment community trade mark court, or equivalent national provisions, has effect in Member States to which the territorial scope of such a prohibition extends.
Unified patent litigation system incompatible with European Law. Exclusive jurisdiction in field of Community patents would alter the essential character of powers which are indispensable to preservation of the very nature of EU law. Member States confer jurisdiction on actions between individuals to a court created by international agreement
“Directing” activity on website to Member State: it should be ascertained whether it is apparent from those websites and the trader’s overall activity that the trader was envisaging doing business with consumers domiciled in one or more Member States. Not exhaustive list of relevant matters.
A license is not a contract for the provision of services: A contract under which the owner of an intellectual property right grants its contractual partner the right to use that right in return for remuneration is not a contract for the provision of services within the meaning of Article 5(1)(b) of Regulation 44/2001.
Rights of phonogram producers: The holder of the rights, who is a national of a non-Member State, enjoys protection in a situation where the work or subject-matter at issue was, on 1 July 1995, protected as such in at least one Member State under that Member State’s national legislation.
IPPT20071011, ECJ, Freeport v Arnoldsson
International jurisdiction in case of connected claims; different legal bases does not preclude application article 6(1)
Article 12 EC, which lays down the general principle of non-discrimination on grounds of nationality, must be interpreted as meaning that the right of an author to claim in a Member State the copyright protection afforded by the law of that State may not be subject to a distinguishing criterion based on the country of origin of the work.
That Articles 17 and 18 of the Di-rective, which guarantee certain rights to commercial agents after termination of agency contracts, must be applied where the commercial agent carried on his ac-tivity in a Member State although the principal is estab-lished in a non-membercountry and a clause of the contract stipulates that the contract is to be gov-erned by the law of that country.
The court of the State in which enforcement is sought cannot, without undermining the aim of the Convention, refuse recognition of a decision ema-nating from another Contracting State solely on the ground that it considers that national or Commu-nity law was misapplied in that decision.
Jurisdiction on the court hearing that application even where proceedings have already been, or may be, commenced on the substance of the case and even where those proceedings are to be conducted before arbitrators.
IPPT19981027, ECJ, Réunion Européenne v Spliethoff
Indivisible dispute? that a defendant domiciled in a Contracting State cannot be sued in another Contracting State before a court seised of an action against a co-defendant not domiciled in a Contract-ing State on the ground that the dispute is indivisible rather than merely displaying a connection. Place of discovery of the damage is not the place where the harmful event occurred. Matters relating to tort
Article 21 of the Convention is not applicable in the case of two actions between different parties, unless it is established that, with regard to the sub-ject-matter of the two disputes, the interests of the parties are identical to and indissociable from one another.
Place where the harmful event occurred must be understood as being intended to cover both the place where the damage occurred and the place of the event giving rise to it. In the case of a libel by a newspaper article the place of the event giving rise to the damage, is the place where the publisher of the newspaper in question is established.
It is sufficient, in order to establish the necessary relationship between different actions, that separate trial and judgment would involve the risk of conflicting decisions, without necessarily involving the risk of giving rise to mutually exclusive legal conse-quences.
IPPT19900111, ECJ, Dumez France
International jurisdiction: The place where the damage occurred: can be understood only as indicating the place where the event giving rise to the damage, and entailing tortious, delictual or quasi-delictual liability, directly produced its harmful effects upon the person who is the immediate victim of that event.
IPPT19880927, ECJ, Kalfelis v Schroeder
International jurisdiction : Jurisdiction of Article 6(1) Brussels Convention is exception to the principle that jurisdiction is vested in the courts of the State of the defendant's domicile. Therefore a connection between the claims made against each of the defendants required. Connection between claims is present if there is a risk of incompatible judgments which are incompatible with each other. Atonomous concept of "matters relating to tort, delict or quasi-delict" of article 5(3) Brussels Convention
IPPT19880204, ECJ, Hoffman
Irreconcilable judgments: Irreconcilable within the meaning of article 27(3) of the Brussels Convention are judgmentsthat have legal consequences which are mutually exclusive
Court has to declare on its own motion that is has no jurisdiction in case of exclusive jurisdiction under article 16 of the Brussels Convention. The term "proceedings concerned with the regis-tration or validity of patents" contained in article 16 (4) must be regarded as an independent concept intended to have uniform application in all the contracting states. It does not include proceedings relating to rights of ownership of a patent
Article 24 Brussels Convention: National courts are best able to assess the cir-cumstances which may lead to the grant or refusal of the measures sought or to the laying down of procedures and conditions which the plaintiff must observe in order to guarantee the provisional and protective character of the measures ordered.
International jurisdiction: Place where harmful event occurred in article 5 (3) must be established in such a way as to acknowl-edge that the plaintiff has an option to commence proceedings either at the place where the damage occurred or the place of the event giving rise to it