CJEU Judgement “Wintersteiger”: useful criteria to determine jurisdiction in Internet-related IP disputes
Questions on jurisdiction on intellectual property disputes are constantly arriving to the Court of Justice of the European Union (CJUE). Two weeks ago we commented on “Solvay”, now it is time for the Judgement of 19 April 2012, C‑523/10, “Wintersteiger”.
Wintersteiger, is an Austrian company that makes and sells ski-related products under the Austrian trademark WINTERSTEIGER. The trademark is also registered in Germany. Product 4U is a competitor based in Germany that makes accessories for Wintersteiger’s tools. Without Wintersteiger’s authorisation, Products 4U registered ‘Wintersteiger’ as a Google AdWord in respect of searches carried out via the top-level domain “.de” (Germany). Every time someone enters “Wintersteiger” into the “google.de” search engine, a sponsored link appears on the right-hand side of the page with a link to Product 4U website. Such sponsored link is not displayed when the word ‘Wintersteiger’ is entered into “google.at” (for Austria). Certainly nothing impedes residents in Austria to access the “google.de” search engine.
Wintersteiger brought an action for an injunction in Austria, together with an application for protective measures, requiring Products 4U to stop using the trade mark WINTERSTEIGER as an AdWord on the google.de search engine. The Oberster Gerichtshof (Austrian Supreme Court) stayed proceedings and referred a preliminary question to the CJEU because there were doubts on whether Austrian courts had jurisdiction to hear about the dispute on the basis of the forum delicti commissi in Art. 5 (3) R. 44/2001 (“the courts of the Member State where the harmful event occurred”).
The Court was very concise in its decision: “Article 5(3) must be interpreted as meaning that an action relating to infringement of a trade mark registered in a Member State because of the use, by an advertiser, of a keyword identical to that trade mark on a search engine website operating under a country-specific top-level domain of another Member State may be brought before either the courts of the Member State in which the trade mark is registered or the courts of the Member State of the place of establishment of the advertiser”.
In Salvador Ferrandis and Partners we have studied the judgement in deep and we have extracted very interesting conclusions from the reasoning of the Court:
a) the unathorized use of a trademark in a website with a ccTLD of a country different from that of the Member State where the trademark is registered does not preclude the infringer from being sued in this latter Member State;
b) in any case, the question on whether such a use constitute an infringement falls within the scope of the examination of the substance of the action that the courts of that Member State will undertake in light of the applicable substantive law;
c) in disputes concerning AdWords and similar Internet-services, the event giving rise to the damage is the activation of the display process. The place where such event occurs for the purpose of Art. 5 (3) is where the establishment of the advertiser is located, not where the server belonging to the operator of the search engine used by the advertiser is located.
d) the recent interpretation of Art. 5 (3) in “eDate Advertising” is not applicable in actions for infringement of IPR. In this decision the CJUE declared that for cases of infringement of personality rights in the Internet, the courts of the residence of the victim can hear about the whole of the infringement, regardless of the place where the harm was caused.
Related Posts:
- On the Different Interpretation of Forum Delicti Commissi in Relation to EU Trademarks and National Trademarks
- US Case Law: “Rosetta Stone vs. Google”
- About the Ubiquity Criterion and the International Jurisdiction on Matters Relating to Seizure of Counterfeit Goods in Customs
- According to the CJEU, The period of 5 years following registration constitutes a grace period for the trademark holder