On the Different Interpretation of Forum Delicti Commissi in Relation to EU Trademarks and National Trademarks
It is broadly accepted that in international trademark infringements, the courts of the State where the infringement took place – the so-called forum delicti commissi – can declare jurisdiction.
In the European Union this ground of jurisdiction is established both for infringements of national trademarks (Art. 7.2 Regulation 1215/2012 or Brussels I) and of EU trademarks (Art. 97.5 Regulation 207/2009). In both cases, these rules are alternative to other heads of jurisdiction such as the defendant’s domicile, the place of the establishment that commits the infringement, or in the case of EU trademarks the plaintiff’s domicile.
The application of the forum delicti commissi when the infringement has been committed in the Internet is problematic in those cases where the action giving rise to the infringement (i. e. uploading the infringing information to a web site) is committed in one State and the effects of that action are felt in other State or States where the web site can be accessed.
Traditionally, the Cour of Justice of the European Union (CJEU) has sustained that the forum delicti commissi allows the courts of each one of those States to declare jurisdiction (Judgments of 19 April 2012, C-523/10, “Wintersteiger” and 3 October 2013 , C-170/12, “Pinckney”). At first sight, since the wording of this ground of jurisdiction is the same in the Brussels I Regulation and the EU Trademark Regulation, this interpretation was applicable both to the infringement of national trademarks and of EU trademarks. However, in its judgement of 5 June 2014, C-360/12, “Coty Germany”, the CJEU adopted a different approach based on the idea that the rules of jurisdiction in the EU Trademark Regulation are lex specialis in relation to the Brussels I Regulation. Since both bodies of rules are informed by different principles, they can be the object of a different interpretation. In this sense, in relation to Art. 97.5 EU Trademark Regulation, the Court understood that the forum delicti commissi only gives jurisdiction to the courts of the Member State where the infringing action takes place.
“the concept of ‘the Member State in which the act of infringement has been committed’ implies, […], that that linking factor relates to active conduct on the part of the person causing that infringement. Therefore, the linking factor provided for by that provision refers to the Member State where the act giving rise to the alleged infringement occurred or may occur, not the Member State where that infringement produces its effects” (par. 34).
The objective of this interpretation is to strengthen defendant’s due process right by reducing the possibilities for the plaintiff to practice forum shopping. This is to be welcome, however the application in practice of this interpretation may result in several problems and, in the end of the day, it may create an important obstacle to the effective enforcement of EU Trademark rights.
An example of these problems can be found in the recent judgment of the England and Wales High Court (Intellectual Property Enterprise Court) 18 October 2016, “AMS Neve Ltd & Ors v Heritage Audio S.L. & Anor”. In this case, a British plaintiff was suing a Spanish company for the infringement of a UK trademark, a similar EU Trademark and passing off. The complaint was filed before English Courts on the basis of forum delicti commissi because the website where the infringing products were sold was accessible from the UK.
The court applied the CJEU case law and declared jurisdiction to know about the dispute concerning the UK Trademark and the acts of passing off. However, the court decline jurisdiction to hear about the infringement of the EU Trademark. Despite the fact that the actions related to the same factual situation and that both trademarks where identical, the right holder could not concentrate both actions before the same court (English court). Certainly, the right holder could have concentrated both complaints before Spanish courts (Art. 4 Brussels I Regulation, Art. 97.1 EU Trademark Regulation) but this possibility considerably increases litigation costs for the right holder.
The problem in this dispute in not exceptional. There are several cases where trademark infringement complaints refer to national and EU trademarks. They usually include passing off actions as well. The interpretation provided by the CJUE restrict right holders from concentrate these actions before of the courts of the Member State where the infringing web site is accessible. In our opinion, this constitutes an important obstacle for an effective enforcement of IPR in Europe.
Related Posts:
- Advocate General understands that a subsidiary in the EU should be considered an establishment for the purpose of the EU Trademark Regulation
- CJEU Judgement “Wintersteiger”: useful criteria to determine jurisdiction in Internet-related IP disputes
- AG Opinion on “Solvay”: cross-border interim measures in patent disputes
- Trademark Coexistence Agreements and International Jurisdiction