As demonstrated by a recent WIPO report,¹ cross-border disputes concerning online
infringement of intellectual property rights are often connected specifically with trade marks.
Such disputes raise a number of private international law issues, including judicial jurisdiction,
the choice of applicable substantive law and the territorial scope of its application. The question
of which court has jurisdiction to hear the case arises first.
This article attempts to analyse and summarise the European Union’s experience in determining
jurisdiction in disputes concerning online trade mark infringement. The experience accumulated
in the EU appears highly relevant to resolving similar issues currently facing the Russian
Federation and the Eurasian Economic Union, or EAEU,² as a whole.
In particular, the Treaty on the Eurasian Economic Union provides for cooperation between the
Member States in the protection and enforcement of intellectual property rights. The main areas
of cooperation include the establishment of a system for the protection of EAEU trade marks and
the enforcement of intellectual property rights, including on the Internet.
The draft Treaty on Trade Marks, Service Marks and Appellations of Origin of Goods of the
EAEU,³ prepared for the implementation of the EAEU Treaty, provides for the regulation of
relations arising in connection with the registration, legal protection and use of EAEU trade
marks. These are unitary trade marks protected simultaneously in all Member States of the
Union.
The draft Treaty refers to the procedure for resolving disputes concerning infringement of EAEU
trade mark rights, but only in the context of applicable law.⁴ It does not contain any rules for
determining the jurisdiction of the courts of the Member States. This is a shortcoming whose
uncertain consequences may become apparent in cross-border disputes concerning infringement
of EAEU trade mark rights, including online infringement.
In addition, studying the jurisdictional approaches applied in the EU in online trade mark
infringement cases may be useful for Russian companies involved in electronic commerce,
particularly in the European and Eurasian markets, when seeking to anticipate and avoid
undesirable litigation abroad.
EU rules on jurisdiction
The rules for determining jurisdiction over cross-border online trade mark infringements are
harmonised within the European Union.
The recast Brussels I Regulation on jurisdiction and the recognition and enforcement of
judgments in civil and commercial matters, Regulation (EU) No. 1215/2012,⁵ has applied since
10 January 2015 in place of the original Regulation No. 44/2001 of 22 December 2000 It
determines jurisdiction in all cross-border civil and commercial matters within the EU.
The Brussels I Regulation is based on the former Brussels Convention on jurisdiction and the
enforcement of judgments in civil and commercial matters of 27 September 1968, which was
also concluded between EU Member States.
The EU jurisdictional principles are also reflected in the 2007 Lugano Convention. The purpose
of the Lugano Convention was to extend the rules of the Brussels I Regulation to the Member
States of the European Free Trade Association, or EFTA, that are not members of the EU,
namely Iceland, Norway and Switzerland.
The rules contained in the Lugano Convention are identical to those in the Brussels I Regulation
and are generally interpreted in the same way.⁶ For that reason, the Lugano Convention is not
analysed further in this article.
Article 7(2) of the Brussels I Regulation, Regulation (EU) No. 1215/2012, applies to tort claims
brought against persons domiciled in an EU Member State.
The domicile of an individual defendant is determined in accordance with the national law of the
Member States under Article 62
The domicile of a corporate defendant is defined by the Regulation itself through three
alternative connecting factors:
the company’s statutory seat
its central administration
its principal place of business
These rules are contained in Article 63 A legal entity may therefore have several domiciles
within the EU.
Where a defendant is not domiciled in a Member State, jurisdiction is determined in accordance
with the national law of each EU Member State.
Although Article 7(2) of the Brussels I Regulation does not apply directly to defendants from
third countries, the provision and its interpretation by the Court of Justice of the European Union
have a significant influence on the interpretation of national jurisdictional rules in the Member
States.⁷
Under Article 7(2), proceedings may be brought in the courts for the place where the harmful
event occurred or may occur.
This concept covers both:
the place where the damage occurred
the place of the event giving rise to the damage⁸
For example, where a person fires a shot from State A and injures another person in State B, the
event giving rise to the damage takes place in State A, while the consequences arise in State B.
The injured party may choose between the courts of those two states.
Territoriality of national trade mark rights
Because trade mark rights are territorial, infringement of such rights differs from other forms of
tort.
Under the principle of territoriality, an exclusive right to a trade mark is effective only within the
state that granted legal protection to the mark. Accordingly, infringement can occur only where
the right is protected.
For this reason, it was widely believed that Article 7(2) of the Brussels I Regulation permitted a
Member State court to assume jurisdiction only in cases involving infringement of trade mark
rights protected in that particular state.⁹
Scholars also suggested that the mere accessibility of a website should not be sufficient to
establish jurisdiction over a cross-border online trade mark infringement. German scholars, in
particular, argued that the online use of a sign had to be specifically directed at users in the state
concerned for its courts to have jurisdiction.¹⁰
However, the Court of Justice of the European Union clarified that the concept of the event
giving rise to damage for jurisdictional purposes does not necessarily have to coincide with the
harmful act as defined under the applicable substantive law.
For jurisdictional purposes, the harmful event is an autonomous concept of EU law and must be
interpreted in the light of the structure and objectives of the Brussels I Regulation.¹¹
The Wintersteiger case
In Wintersteiger,¹² which reached the Court of Justice of the European Union, the German
company Products 4U reserved the keyword "Wintersteiger" for an advertisement in the Google
AdWords system on the German website google.de.
The keyword was identical to a competitor’s trade mark protected in Austria.
Users who entered "Wintersteiger" into the search engine were therefore shown an advertising
link to the Products 4U website.
The trade mark owner sought protection before an Austrian court because google. de was a
German-language service that was also accessible to users in Austria.
Products 4U denied both the jurisdiction of the Austrian courts and the existence of any
infringement. It argued that google. de was intended for users in Germany and that the
advertisement was directed exclusively at them.
The court of first instance held that, because the Google website using the national top-level
domain .de was directed at users in Germany, the Austrian courts had no jurisdiction.
The appellate court reached the opposite conclusion and assumed jurisdiction, but dismissed
Wintersteiger’s claim on the merits.
The case reached the Austrian Supreme Court, which asked the Court of Justice whether the
Austrian courts could establish jurisdiction under Article 7(2) of the Brussels I Regulation.
The Court of Justice confirmed that, in the context of online trade mark infringement, the
expression "the place where the harmful event occurred or may occur" also covered both:
the place where the damage occurred
the place of the event giving rise to the damage
On this basis, an action for infringement of a national trade mark may be brought before the
courts of the Member State in which the mark is registered.
Protection is limited to the territory of that state, and the state of registration is therefore the
place where the damage is alleged to have occurred.
Whether the defendant’s conduct actually constitutes infringement must be assessed by the court
of the state of protection under the applicable substantive law when deciding the merits of the
case.
The Court of Justice also held that the territorial limitation of the protection afforded to a
national trade mark does not exclude the international jurisdiction of courts in states other than
the state of registration.
In such cases, the event giving rise to the damage is the activation by the alleged infringer of the
technical process by which the disputed advertisement is displayed.
That technical process is activated on the server of the search engine operator used by the
advertiser. However, the location of the server is uncertain and therefore cannot be treated as the
place of the event giving rise to the damage.
According to the Court, the place where the technical process for displaying the advertisement is
activated should therefore be regarded as the place where the advertiser is established.¹³
Consequently, notwithstanding the territoriality of exclusive trade mark rights, proceedings may
be brought and heard not only in the state where the mark is protected, but also in the Member
State where the defendant is established. This may theoretically lead to adverse consequences for
the defendant.¹⁴
Unitary EU trade marks
Alongside national trade marks, the European Union has a regional system of protection under
which a registered European Union trade mark, or EUTM, has unitary character and is protected
simultaneously and equally in all EU Member States.
The harmonising instrument currently governing this area is Regulation (EU) 2017/1001 on the
European Union trade mark, or the EUTMR. It entered into force on 1 October 2017 and
replaced the former Regulation No. 207/2009.
The EUTMR establishes autonomous rules of international jurisdiction for disputes concerning
infringement of an EU trade mark.
It expressly excludes both:
the jurisdictional rules of the Brussels I Regulation
the national rules of the EU Member States that apply to foreign persons in disputes
concerning infringement of national trade marks¹⁵
Disputes concerning infringement of an EUTM must be heard by specialised EU trade mark
courts established in each Member State.
The forum will therefore always be located within the EU. The principal issue is which Member
State's courts should hear the dispute.
Under Article 125 of Regulation (EU) 2017/1001, an action concerning an EUTM must be heard
by the courts of the Member State in which the defendant is domiciled or, if the defendant is not
domiciled in any Member State, in which it has an establishment, under Article 125(1).
Where the defendant has neither a domicile nor an establishment within the EU, the action must
be heard by the courts of the Member State in which the claimant is domiciled or, if the claimant
is not domiciled in any Member State, in which the claimant has an establishment, under Article
125(2).
Hummel Holdings v Nike
In Hummel Holdings A/S v Nike Inc. and Nike Retail BV,¹⁶ the Court of Justice interpreted the
concept of an establishment under Article 125 EUTMR.
According to the Court, a subsidiary or a company controlled through a subsidiary may
constitute an establishment of a foreign parent company within the EU where the company:
acts as a centre of operations for the parent company within the EU and has a real and
stable presence from which commercial activity is pursued
appears to third parties as a permanent extension of the parent body
Jurisdiction may be established where these conditions are satisfied regardless of whether the
subsidiary or indirectly controlled company is itself a party to the proceedings.
Researchers have observed that such a broad interpretation of the concept of an establishment
within the EU may encourage claimants to engage in forum shopping.¹⁷ This is particularly
relevant to multinational companies, which often have several establishments, subsidiaries or
indirectly controlled companies throughout the EU.
Where neither the claimant nor the defendant has a domicile or establishment within the EU, the
action must be heard by the courts of the Member State in which the Office is located, under
Article 125(3).
Article 125(5) also provides that a dispute concerning infringement of an EUTM may be heard
by the courts of the Member State in which the act of infringement was committed or threatened.
However, a court whose jurisdiction is based on Article 125(5) may hear only matters relating to
acts committed or threatened within the Member State in which that court is located, under
Article 126(2).
Coty Germany v First Note Perfumes
In Coty Germany v First Note Perfumes,¹⁸ the Belgian wholesale company First Note sold
perfume products bearing an allegedly confusingly similar EU trade mark belonging to Coty
Germany to a German trader.
The trader took delivery of the products in Belgium and subsequently resold them in Germany.
Coty brought proceedings against the Belgian company First Note, but not against the German
trader, before a German court. It claimed that the German courts had jurisdiction under Article
125(5) EUTMR.
The courts of first instance and appeal dismissed the action on the ground that the German courts
lacked jurisdiction.
The German Federal Court of Justice asked the Court of Justice whether Article 125(5) EUTMR
should be interpreted in the same way as Article 7(2) of the Brussels I Regulation, so that an
action could be brought either:
in the place of the event giving rise to the damage, namely Belgium
in the place where the damage occurred, namely Germany¹⁹
The Court of Justice held that Article 125(5) EUTMR must be interpreted independently of
Article 7(2) of the Brussels I Regulation.²⁰
The wording "the Member State in which the act of infringement has been committed or
threatened" refers to a connecting factor based on an active act by the person who committed the
alleged infringement.
Accordingly, the connecting factor refers to the Member State in which the act giving rise to the
alleged infringement occurred or may occur, and not to the Member State in which the
infringement produces its effects. The Court also explained that jurisdiction based on the place where the alleged infringement
produces its effects would be inconsistent with Article 126(2).
That provision limits the jurisdiction of an EU trade mark court acting under Article 125(5) to
acts committed or threatened in the Member State in which that court is located.²¹
The Court further emphasised that both the origins and context of the EUTMR demonstrated the
legislature's intention to depart from Article 7(2) of the Brussels I Regulation. One reason was
the inability of that rule to address the particular problems associated with infringement of
unitary EU trade mark rights.²²
The Court therefore concluded that, under Article 125(5) EUTMR, exclusive jurisdiction
belonged only to the EU trade mark courts located in the Member State in which the defendant
committed the allegedly unlawful act.
German case law concerning online infringement
According to M. Bolling, German EU trade mark courts had until recently applied this rule
liberally in cases involving online infringement.
They assumed international jurisdiction where the relevant online presence was at least also
directed at the German public.
A German-language version of the content, delivery terms for Germany or contact information
specifically intended for German Internet users was generally sufficient for proceedings to be
commenced successfully before German courts.²³
However, on 9 November 2017, in the Perfume Marks case,²⁴ the German Federal Court of
Justice held that this practice was incorrect.
It explained that, under a correct application of Article 125(5) EUTMR, one and the same act of
infringement can be committed in only one Member State.
The decisive factor is where the infringer performs the unlawful act, not the countries in which
the infringement produces its effects.²⁵
In that case, the claimant owned EU trade marks protected for perfumes.
The defendant, an Italian distributor of perfumes and cosmetics, operated a website under an
Italian national domain name that allowed content to be displayed in German.
The defendant sold the disputed products bearing the claimant’s trade marks to a German
company and delivered them in Italy to a carrier appointed by the purchaser for onward
transportation to Germany.
The claimant commenced proceedings in Germany.
The defendant challenged the international jurisdiction of the German courts and stated that all
correspondence concerning the delivery had been conducted exclusively by email.
The Regional Court dismissed the action for lack of international jurisdiction. The appellate
court, by contrast, considered that the German courts had jurisdiction.
The German Federal Court of Justice explained that the ability to display German-language
content on a website operating under an Italian national domain did not establish jurisdiction in
Germany.
The place where the infringement occurred was not the Member State in which the website was
accessible, but the Member State in which the infringing act was initiated, in this case Italy.
The fact that the defendant sent an email to Germany also did not confer jurisdiction on the
German courts. The decisive factor was the EU Member State from which the email had been
sent.²⁶
ConclusionsEU legislation and case law therefore apply different approaches to determining jurisdiction in
online trade mark infringement cases depending on whether the protected trade mark is:
Where the alleged infringement concerns the use of a national trade mark protected in an EU
Member State, the courts of the state of protection have jurisdiction.
Those courts must determine whether the defendant’s conduct constitutes infringement under the
applicable substantive law when deciding the merits of the case.
In addition, notwithstanding the territoriality of trade mark protection, the courts of the state in
which the defendant initiated the technical process resulting in the alleged online infringement
will also have jurisdiction.
Following the approach of the Court of Justice, this will be the courts of the state in which the
defendant is established.
Although logically a trade mark cannot be infringed in a state in which it is not protected,
proceedings before such a court may theoretically have unpredictable consequences.
Where the alleged infringement concerns an EU trade mark, jurisdiction will always be located
within the EU.
Article 125(1) to (3) EUTMR establishes a sequence of jurisdictional rules:
- the courts of the defendant’s domicile or establishment
- the courts of the claimant’s domicile or establishment
- the courts of the Member State in which the Office is located
Jurisdiction may be difficult to predict for foreign companies that have several establishments,
subsidiaries or indirectly controlled companies within the EU.
In addition, under Article 125(5) EUTMR, the courts of the Member State in which the
infringement was committed or threatened have jurisdictio.
According to the reasoning of the Court of Justice in Coty and the more recent German case law,
the place of an online infringement is not the state in which a website is accessible, but the state
in which the infringing act was initiated.
This will most often coincide with the defendant's place of establishment and lead to jurisdiction
under Article 125(1) EUTMR.
References
1 Christie A.F. Private International Law Issues in Online Intellectual Property
Infringement Disputes with Cross-Border Elements: An Analysis of National Approaches.
WIPO, 2015, p. 9, Table 2
2 The Eurasian Economic Union was established by the Treaty on the Eurasian Economic
Union, signed in Astana, Republic of Kazakhstan, on 29 May 2014 and effective from 1
January 2015 As of February 2018, the EAEU Member States were the Republic of
Armenia, the Republic of Belarus, the Republic of Kazakhstan, the Kyrgyz Republic and
the Russian Federation.
3 The draft Treaty was approved by Decision No. 13 of the Council of the Eurasian
Economic Commission dated 16 March 2016 and Order No. 171-r of the Government of
the Russian Federation dated 2 February 2017
4 Under Article 3(4) of the draft Treaty, disputes concerning infringement of the exclusive
right to a Union trade mark within a Member State are resolved in accordance with the
law of that state. Under Article 3(5), infringement of the exclusive right to a Union trade
mark is subject to the same liability as infringement of the exclusive right to a trade mark
registered in that Member State.
5 Regulation (EU) No. 1215/2012 of the European Parliament and of the Council of 12
December 2012 on jurisdiction and the recognition and enforcement of judgments in civil
and commercial matters, Official Journal of the European Union, L 351/1, 20 December
2012
6 Lundstedt L. Territoriality in Intellectual Property Law: A Comparative Study of the
Interpretation and Operation of the Territoriality Principle in the Resolution of
Transborder Intellectual Property Infringement Disputes with Respect to International
Civil Jurisdiction, Applicable Law and the Territorial Scope of Application of
Substantive Intellectual Property Law in the European Union and United States.
Dissertation, Department of Law, Stockholm University, 2016, p. 131
7 See, for example, Article 6(e) of the Dutch Code of Civil Procedure, under which Dutch
courts also have jurisdiction in matters concerning obligations arising from tort where the
harmful event occurred or may occur in the Netherlands. See also van Engelen Th.C.J.A.
"Jurisdiction and Applicable Law in Matters of Intellectual Property", Electronic Journal
of Comparative Law, 2010, Vol. 14, No. 3, pp. 6−7.
8 Case C-21/76, Handelskwekerij Bier v Mines de Potasse d’Alsace, 1976; Joined Cases C-
509/09 and C-161/10, eDate Advertising and Others, 2011, para. 41
9 Bettinger T., Thum D. "Territorial Trademark Rights in the Global Village — International
Jurisdiction, Choice of Law and Substantive Law for Trademark Disputes on the Internet
— Part One", IIC, 2000, pp. 171−172; Mozina D., in Kono T., ed., Intellectual Property
and Private International Law: Comparative Perspectives, Oxford, Hart Publishing,
2012, p. 957; Boschiero N. "Infringement of Intellectual Property Rights. Comments on
Article 8 of the Rome II Regulation", Yearbook of Private International Law, Vol. 9,
2007, p. 105
10 Bettinger T., Thum D., op. cit., p. 170; Dinwoodie G.B. Private International Aspects of
the Protection of Trademarks, WIPO Doc. No. WIPO/PIL/01/4, 2001, p. 17
11 Lundstedt L., op. cit., p. 160
12 Case C-523/10, Judgment of 19 April 2012, Wintersteiger, ECLI: EU:C:2012:220.
13 Ibid., paras. 38−39.
14 Lundstedt L., op. cit., pp. 163−164.
15 See Article 122(2)(a) of Regulation (EU) 2017/1001 on the European Union trade mark;
Lundstedt L., op. cit., p. 132; Rosati E. International Jurisdiction in Online EU Trade
Mark Infringement Cases: Where Is the Place of Infringement Located?, 2016, p. 6
16 Hummel Holdings A/S v Nike Inc. and Nike Retail BV, C-617/15, EU: C:2017:390.
17 Tajbr J. "EU: ECJ Decision in Hummel Holding vs. Nike as a Basis for Forum
Shopping", 2017; Vaccarello E., Angelini F. "Jurisdiction, European Style", Kluwer
Trademark Blog, 26 June 2017
18 Coty Germany GmbH v First Note Perfumes NV, C-360/12, EU: C:2013:764.
19 The judgment refers to Articles 93(5) and 94(2) of Regulation No. 40/94, which applied
when the dispute was heard. These provisions are now contained in Articles 125(5) and
126(2) of Regulation (EU) 2017/1001.
20 Case C-360/12, Coty Germany, para. 31
21 Ibid., paras. 34−35.
22 Ibid., para. 36
23 Bolling M. "Case Law — Limitation of International Competence in EUTM Infringement
Cases", 2017
24 German Federal Court of Justice, judgment of 9 November 2017, Case I ZR 164/16,
Parfummarken, or Perfume Marks.
25 Bolling M., op. cit.
26 German Federal Court of Justice, judgment of 9 November 2017, Case I ZR 164/16,
Parfummarken, cited in Benson C., Baars W. "BGH Rules on International Jurisdiction
of German Courts in EU Trade Mark Infringements", 2017
Journal of the Intellectual Property Court
Ramzan Islamovich Khusainov
17 April 2018
Updated: 17 July 2026