Trademark law: Better safe than sorry

Despite the European lawmakers’ intentions for the EU trade mark to be an EU wide trade mark right, a recent decision by the Federal Court of Germany demonstrates that it is difficult to bring infringement proceedings based on an EU trade mark right in Germany where the infringing acts occurred in other European countries.

In the case at hand, the claimant is the owner of several international registrations covering the EU for, amongst others, the mark DAVIDOFF, whilst the defendant, who is based in Italy, sells and distributes perfumes worldwide through their website (accessed at .it – an Italian domain). For German customers, the defendant’s website contains the defendant’s contact details but does not allow them to make orders.

In 2012, the defendant agreed to stop importing, offering, distributing and advertising the defendant’s perfume products in Germany. Subsequently, a German-based company contacted the defendant requesting product and pricing information which the defendant sent by email from Italy. This information led the German-based company to order several “Davidoff Cool Water” perfumes. The defendant accepted the order and, via a forwarding agent in Italy, exported the perfumes to Germany.

Given that the claimant’s perfume had been sold in Germany without the claimant’s consent, the claimant brought a trade mark infringement action at the district court in Munich to obtain an injunction. The district court dismissed the action on the basis it had no jurisdiction. However, the Higher Regional Court found the action to be admissible. On appeal, the Federal Court of Germany heard the arguments for jurisdiction. On the basis of Art. 125 V UMV, they held that the German courts did not have jurisdiction, in the given circumstances, when considering the infringement of an EU wide trade mark right.

The Federal Court’s decision found that the place of the event giving rise to the damage is not the place where the website can be accessed but where the offer containing the infringing act is published on the website; which in this case was Italy. Also in sending the product and price information by email from Italy meant the German courts could not justify they had jurisdiction as the e-mail was sent in Italy. It follows then that if there are various infringing acts in different EU member states, the place of the (original) infringement shall be determined on the basis of an overall assessment of the conduct.

This decision by the Federal Court’s reinforces the ECJ’s decision in C-24/16, C-25/16 (Nintendo Co.Ltd./BigBen Interactive GmbH) where they stipulated that the member state in which the infringement was committed means the Member State in which the event giving rise to the damage occurred. Where it is alleged that the same defendant has committed infringing acts in different Member States, the determination of the event giving rise to the damage shall not be based on each individual act of infringement, but shall be based on an overall assessment of the defendant’s conduct.

Given this decision, it now appears to be more difficult for owner’s of EU trade mark rights to bring infringement actions in the German courts. As such, trade mark owners are well advised to consider applying for German national trade marks to ensure the German national courts have jurisdiction to hear an infringement action.