Is targeting consumers of a country enough to give the Courts jurisdiction?

The Court of Justice of the European Union (“CJEU”) has just confirmed in the case AMS Neve C-172/18, that the owner of an EU Trade Mark can bring a claim in the country where the infringer has offered the infringing goods for sale to consumers. This is good news for trade mark owners as well as EU trade mark courts as the jurisdiction in which action must be brought is not limited by where the infringer was domiciled.

The applicants, AMS Neve, are a UK registered company which manufactures and sells audio equipment. In 2015, they brought a claim against the defendants, Heritage Audio and Mr Rodiquez Arribas, before the UK Intellectual Property and Enterprise Court (“IPEC”). As the defendants’ are domiciled in the Kingdom of Spain, and in accordance with Article 97(1) and Article 97(5) of Regulation No 207/2009 (which state that claims must be heard in the defendant’s home court or where the act of infringement has been committed) IPEC held that they had no jurisdiction to hear the claim.

The applicant appealed the decision to the Court of Appeal. The proceedings were stayed and the case referred to the CJEU. In this instance, the Court of Appeal was of the opinion that IPEC had misinterpreted the previous case law, and to do so could affect the future enforcement of EU trade marks.

The CJEU agreed with the Court of Appeal, that IPEC had been wrong to refuse jurisdiction and the CJEU’s interpretation of Regulation No 207/2009 means that when a defendant in Member State A has targeted and advertised to consumers in Member State B and offered for sale goods under a sign that is identical to an EU trade mark on a website (that is to target consumers in Member State B) a court in Member State B would have jurisdiction to hear an action against the EU Trade Mark in respect of infringement.

This may be a win for the rest of the Member States, but as the UK is soon to be the country formally known as a Member State, what about the actual implications after Brexit on our national law? In short, once we leave the EU Trade Mark Regulation and the Brussels I Regulation will no longer be applicable and UK Common Law will apply. It could be that the UK courts will have the opinion that the jurisdiction where the infringing act targets consumers will be the most appropriate court to hear action of infringement under Common Law. However, as with all things Brexit we will have to wait and see.

Written by Ceyda Sam, Solicitor