International Jurisdiction in Online EU Trade Mark Infringement Cases

Eleonora Rosati (University of Southampton), “International Jurisdiction in Online EU Trade Mark Infringement Cases: Where Is the Place of Infringement Located?”

Article 97 of the European Union Trade Mark Regulation (EUTMR) sets a number of grounds to determine international jurisdiction in cases of alleged infringement of a European Union trade mark (EUTM). Besides the possibility to bring proceedings before the courts of the Member State of domicile/establishment of the defendant/claimant and where the European Union Intellectual Property Office (formerly the Office for Harmonization in the Internal Market) has its seat, Article 97(5) EUTMR also allows for proceedings to be brought “in the courts of the Member State in which the act of infringement has been committed or threatened”. Lacking specific guidance from the Court of Justice of the European Union (CJEU), this contribution asks how Article 97(5) EUTMR is to be interpreted in relation to proceedings for alleged infringement of a EUTM over the internet. It concludes that, in light of preceding jurisprudence, the CJEU may hold that this is place where the activation of the process for the technical display of infringing content on a certain website takes place. While in the majority of instances this is likely to be the same place where the defendant is domiciled/established, this may not always be the case.