Due to the borderless nature of the Internet, it is often a hard question in which country right holders may file an action against online IP infringements. Concerning online infringement of EU trade marks, the CJEUhas now created (some) clarity in AMS Neve v. Heritage – C-172/18. Trade mark holders may sue not only in the infringer’s home country but also in the country to which the infringing offers for sale and advertising are directed. This results from Art 125 (5) UMV (formerly Art 97 (5) CTMR).

Thus, the CJEU contradicts the 2017 decision of the German Supreme Court (BGH) in the so-called Parfummarken-Case. In this decision, the BGH ruled that online advertising and even offers for sale directed at Germany were not sufficient to establish jurisdiction in Germany. In justifying this decision, the BGH referred to the Coty Germany (C-360/12) decision of the CJEU, according to which Art 97 (5) CTMR requires active conduct of the defendant in the relevant state. However, the CJEU has now ruled that electronic advertisement and offers for sale qualify as active conduct and therefore establish jurisdiction in the country to which this conduct is directed.

However, it is not possible to claim compensation for the entire damage that accrued in the EU in the infringement jurisdiction, but only to claim damages for sales that occurred in the relevant country. Also, an injunction title can only be requested for this country. Compensation for the entire damage, as well as an EU-wide injunction, can only be claimed in the infringer’s home state. Therefore, if a French company sells goods both to Austria and Germany, Austrian courts only have jurisdiction for damages for goods supplied to Austria. In France, on the other hand, a trade mark proprietor could claim damages for all deliveries.

Despite this limitation, the infringement jurisdiction offers advantages, as it enables the plaintiff to sue in his home country (if there is an infringement in his home country). This is advantageous since many right holders are reluctant to sue abroad, for example, because of higher costs (e.g. through translations) or uncertainty about foreign law.

Directing offers for sale and advertisement

The judgment does not provide further details as to when offers for sale and advertisement on the Internet are deemed to be directed to a particular country. It is clear, however, that active behaviour on the part of the infringer is necessary (paragraph 44 of the decision). Therefore, the mere availability of the infringing website in the infringing state will not suffice. This differs from national trade mark, copyright and unfair competition law: To establish jurisdiction for an “Internet offence”, the sole criterion is the availability of the infringing website in the relevant country (see e.g. Austrian Supreme Court 20.12.2018, 4 Ob 181/18y).

However, the requirements for “directing” should not be too high, as the CJEU emphasises that the differences in jurisdiction between Union trade marks and national trade marks should be reduced as far as possible (paragraph 58 of the decision). Finally, the EU Trade Mark Regulation aims to allow Union trade mark proprietors to bring actions before the same Member States based on Union trade marks and parallel national trade marks.

What kind of behaviour of the infringer qualifies as “directing” to a country? The Advocate General was more concrete and cited a few examples in his Opinion (Rz 89f). He said that a number of factors are of particular importance: the fact that an offer and an advertisement refer expressly to the public of a Member State; that they are available on a website with a country-specific top-level domain; that the prices are given in the national currency; telephone numbers with national prefix; delivery area (as long as it is not delivered to the entire EU). However, the CJEUdid not expressly confirm the importance of these factors in its decision.

Not relevant should be the language of the website as long as it is common the EU (paragraph 92 of the Opinion). A German-language version of a website is therefore not automatically directed towards Germany. It could just as well be aimed exclusively at customers in Austria.

Not referred to by the Advocate General, but already mentioned by the CJEUin another context, are investments to make it easier for consumers to access the website via Internet search engines.[1] Advertisements on the Internet are often restricted to specific countries. In these cases, the mere fact that a consumer sees a certain advertisement already means that the entrepreneur has actively decided to direct his advertising towards his country.  

In individual cases, however, it can still be difficult to determine which country a specific website is directed at. It therefore remains to be seen on which criteria the national courts will ultimately rely.

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[1] Peter Pammer v. Reederei Karl Schlüter and Hotel Alpenhof v. Oliver Heller – C-585/08, C-144/09, on the interpretation of Art 17 Brussels Ia Regulation, which establishes the jurisdiction of the country of origin of the consumer for consumer contracts if the trader has directed his professional and commercial activity there.