In cases were an online trader from another European country offers goods for sale to customers in Germany on its website in a manner that infringes trademarks, case law of the Federal Court of Justice in Germany (judgment of 9 November 2017 - I ZR 164/16) has so far rejected the international jurisdiction of German courts for infringement actions by EUTM owners pursuant to Art. 97 Para. 5 of Regulation (EC) No. 207/2009. The FCJs reasoning was, that it is not the place where the website can be accessed that is decisive, but the place where the publication of the offer was initiated.
The current decision of the European Court of Justice (judgment of 5.9.2019 - C-172/18), rectifies this decision somewhat and effectively means that the reference to the "original place of infringement", as in Germany, can no longer be fully maintained. An infringement of a EUTM within the meaning of Art. 97 (5) CTMR is to be regarded as "committed" in the territory in which the commercial content was made available to the consumers to whom it was addressed. An infringement action may therefore be brought before a EUTM court of the Member State in which the consumers are located to whom the sales offers are addressed, even though the website creator originally operated from another Member State.
The ECJs main reason being that it would otherwise be left to the trademark infringer to “choose” the place of the infringement action and possibly have it coincide with the territory of his place of business and thus deprive owners of the infringed EUTM of the possibility of an alternative place of jurisdiction. Furthermore, it would be extremely difficult for the trade mark proprietor to determine where that place of origin took place.
With this decision, the European Court of Justice has strengthened the EUTMs in relation to the national trademarks and further established EUTM owners opportunity to file infringement actions in the member state in which the misled consumers are domiciled.
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