German Federal Court of Justice rules on the scope of jurisdiction of national courts
In an online context, IP infringement frequently occurs simultaneously in more than one country and so the flexibility to take action where it will have the greatest impact is critical. The German Federal Court of Justice has recently ruled on the scope of jurisdiction of national courts over online infringements of EU trademarks based on the location of the infringing acts (ref. I ZR 164/16). Construing the EUTM Regulation narrowly, it held that the jurisdiction of courts of the EU Member States “in which the act of infringement has been committed” is limited to the original place of the infringing conduct which must be identified through an overall assessment.
The Plaintiff manufactures and distributes perfumes globally and is the owner or exclusive licensee of a broad portfolio of national, EU and international (IR) trademark registrations. The portfolio includes the EUTM “CALVIN KLEIN”, the IR “DAVIDOFF” designating the EU and the IR “CORVET” designating Germany. The Defendant is an Italian company trading with perfumes and operating a website that presents the offered goods in various languages, including German. While the Defendant’s website presents contact details, it does not allow products to be directly ordered online. A German company contacted the Defendant via email, ordered perfumes and had the products transported from Italy to Germany through a shipping company. In the course of the transaction, the Italian Defendant sent emails on the availability and prices of the products to the German buyer. The Plaintiff claimed that the perfumes in question had not been put into circulation in the EU with its authorization and brought a trademark infringement action in Germany. The Defendant challenged the international jurisdiction of the German courts.
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