AMS Neve Ltd & Ors v Heritage Audio SL & Anor

Jurisdiction for EU trade mark infringement is governed by the autonomous scheme in the CTM Regulation (codified version), rather than the general tort jurisdiction rule in the Brussels regime. A claimant may sue in the defendant’s domicile for EU-wide relief, or in a Member State where an infringing act was committed or threatened, but the latter court is confined to acts in its territory. In online cases, the question is whether advertising and offering goods through a website targeted at that territory constitutes active conduct there. Authorities concerning different provisions or factual settings cannot resolve that question automatically. Where existing authorities leave the point materially uncertain, a preliminary reference to the Court of Justice is appropriate.

The claimants owned or exclusively licensed an EU trade mark and alleged that the Spanish defendants infringed it by advertising and offering audio equipment for sale in the United Kingdom through a targeted website. The claimants also brought claims concerning UK trade marks and passing off.

His Honour Judge Hacon found a good arguable case that the website was directed at the UK and that the defendants had advertised and offered goods there. He accepted jurisdiction over the UK trade mark and passing-off claims, but held that the IPEC had no jurisdiction over the EU trade mark claim under Article 97(5) of the CTM Regulation (codified version): jurisdiction lay only where the website was organised, namely Spain. The appeal concerned whether the IPEC had jurisdiction over the alleged UK acts and, alternatively, whether a preliminary reference was required.

Lord Justice Kitchin gave the judgment, with Lord Justice Lewison agreeing. The Court of Appeal was not persuaded that the first-instance conclusion necessarily followed from the authorities.

1. Statutory scheme. The CTM Regulation (codified version) creates a distinct jurisdictional regime for EU trade mark infringement. Proceedings may be brought in the defendant’s Member State of domicile for EU-wide relief, or under Article 97(5) in a Member State where the act of infringement was committed or threatened. Under Article 98(2), jurisdiction under Article 97(5) is limited to acts committed or threatened in that territory.
2. Online conduct. The alleged acts were advertising and offering goods bearing the signs for sale in the UK. It was strongly arguable that those acts occurred in the UK, notwithstanding that the defendants had organised the website in Spain. The meaning of active conduct under Article 97(5) had to be assessed by reference to that regulation’s own wording, context and purpose.
3. Authorities. Wintersteiger concerned a national mark and the Brussels jurisdiction rule. Coty established the importance of active conduct but arose from materially different facts and provisions. Nintendo provided powerful support for locating online activity by reference to activation of the relevant process, but arose under a different statutory context. The German decision in Parfummarken deserved respect, although there were substantial arguments that its conclusion might not be correct.
4. Reference. Because the proper interpretation of Article 97(5) remained materially uncertain, Kitchin LJ concluded that assistance from the Court of Justice was required. He proposed three questions concerning jurisdiction in the target Member State, the relevant criteria if jurisdiction was unavailable there, and the criteria for identifying active steps in that territory. Lewison LJ agreed. The supplied judgment does not record a final merits determination of jurisdiction.

• Court of Appeal (Civil Division): Kitchin LJ proposed a preliminary reference concerning the interpretation of Article 97(5) of the CTM Regulation (codified version); Lewison LJ agreed. [2018] EWCA Civ 86
• High Court of Justice, Chancery Division, Intellectual Property Enterprise Court: Hacon HHJ held that the IPEC lacked jurisdiction over the EU trade mark infringement claim, while accepting jurisdiction over the UK trade mark and passing-off claims. [2016] EWHC 2563 (IPEC)