The CJEU has just been posed the following questions on the interpretation of Article 97(5) of the EU Trade Mark Regulation ((EC) No. 207/2009) by the English Court of Appeal. The questions concern jurisdiction to hear EU trade mark infringement claims in a cross-border online advertisement and sale case and the answers will have consequences not only for EU trade mark but also for EU design litigation across Europe. That’s because the jurisdiction provision in issue is in identical terms in the Community Designs Regulation (Article 82(5), (EC) No.6/2002).
In circumstances where an undertaking is established and domiciled in Member State A and has taken steps in that territory to advertise and offer for sale goods under a sign identical to an EU trade mark on a website targeted at traders and consumers in Member State B:
i) does an EU trade mark court in Member State B have jurisdiction to hear a claim for infringement of the EU trade mark in respect of the advertisement and offer for sale of the goods in that territory?
ii) if not, which other criteria are to be taken into account by that EU trade mark court in determining whether it has jurisdiction to hear that claim?
iii) in so far as the answer to (ii) requires that EU trade mark court to identify whether the undertaking has taken active steps in Member State B, which criteria are to be taken into account in determining whether the undertaking has taken such active steps?
At the end of 2016, the judge in charge of the UK’s Intellectual Property Enterprise Court (IPEC), Judge Hacon, handed down his ruling on jurisdictional challenge in a case concerning the enforcement of registered UK national and EU trade marks: AMS Neve Ltd & Ors v Heritage Audio S.L. & Ors  EWHC 2563 (IPEC). This decision has baffled UK IP lawyers for the past year. As we explain below, it has also somewhat baffled the English Court of Appeal which handed down its judgment on 1 February 2018 along with the above questions for the CJEU:  EWCA Civ 86.
The Claimant/Appellant, AMS Neve Limited (“AMS”), has manufactured and sold a “1073”-branded microphone preamplifier in the UK since the 1970s. By all accounts, this piece of equipment is extremely well-known in the recording industry and is at the very top end of its market, retailing for $4,749. AMS is the proprietor of three trade marks: one EU trade mark for the word “1073”, and to UK trade marks for logos incorporating a stylised sine wave, all registered for goods associated with sound recording and processing in class 9.
The Defendant/Respondent, Heritage Audio S.L. (“Heritage”), is a Spanish company. Fairly recently it started producing an identical “1073” product and offered it for sale on its website. AMS issued proceedings in the UK for infringement of all three of the above trade marks and for passing off, on the basis that Heritage’s offers for sale and sales of infringing products have occurred, among other places, in the UK.
Heritage applied for a declaration that the English courts did not have jurisdiction to try the claim. In his decision, Judge Hacon accepted that Heritage’s English-language website sold to UK customers: any EU customers could place orders and Heritage would ship to them, and the website indicated that their products could be purchased from a UK distributor. Continue Reading