AMS Neve Ltd & Ors v Heritage Audio S.L. & Anor

For national intellectual property rights, jurisdiction under art.7(2) of Brussels I may arise in the Member State where the right subsists, provided there is a good arguable case of actionable damage within that jurisdiction. It may also arise at the place of the event giving rise to the damage, normally the place most likely to facilitate evidence and proceedings.

EU Trade Mark jurisdiction under art.97(5) of the Trade Mark Regulation is interpreted independently. It concerns the Member State where the defendant committed or threatened the active infringing act, not merely where the sign was displayed or its effects were felt. An internet site accessible in England may constitute a targeted advertisement or offer for sale where the evidence supports that conclusion. A claim that an individual is a joint tortfeasor for English infringement or passing off is determined by English law.

The claimants alleged that a Spanish audio-equipment company and its director had infringed an EU Trade Mark and two UK trade marks, and had committed passing off, through advertising, offers for sale and sales under confusingly similar signs.

The defendants applied under CPR Part 11 for a declaration that the English courts lacked jurisdiction. The principal issues were whether the evidence established a good arguable case that the company had advertised or offered goods for sale in England, whether art.97(5) conferred jurisdiction over the EU Trade Mark claim, and whether the director could be sued as a joint tortfeasor.

1. National marks and passing off. Under art.7(2) of Regulation (EU) No. 1215/2012, the courts of the Member State where the relevant intellectual property right subsists have jurisdiction in respect of damage occurring there. The claimant must still show an arguable actionable act or threatened act within the jurisdiction. Jurisdiction may alternatively arise at the place of the event giving rise to the damage, ordinarily the place most likely to facilitate evidence and the conduct of proceedings.
2. Internet offers. Mere accessibility of a website is insufficient to establish that an offer is targeted at English consumers for trade mark purposes. Targeting is assessed case by case, having regard to the website, the services offered and other relevant evidence. On the evidence, the reference to a UK retailer, the website’s ordering arrangements and its terms of sale established a good arguable case that the company advertised and offered goods for sale in the UK. The website was not merely an invitation to treat.
3. EU Trade Mark. Art.97(5) of Council Regulation (EC) No. 207/2009, as amended, has an independent meaning. It confers jurisdiction where the defendant committed or threatened the active infringing act. Display of a sign on a website in England did not suffice where the relevant steps or decision to place the sign on the website occurred in Spain. The EU Trade Mark claim therefore fell within the jurisdiction of the Spanish courts only.
4. Director’s liability. Whether Mr Arribas was jointly liable for English trade mark infringement or passing off depended on English law and the relevant facts, not Spanish law. His evidence supported a good arguable case that he was responsible for Heritage Audio’s significant acts.
5. The application succeeded concerning the EU Trade Mark claims against both defendants. It was dismissed concerning the UK trade marks and passing off.