Where to sue
Jurisdiction, applicable law and impact on remedies in the EU
European trade mark courts
This may come as a surprise to some outside of the EU: neither the General Court nor the European Court of Justice (ECJ) (together, the CJEU) – both based in Luxemburg – are competent to hear EU trade mark (EUTM) infringement cases. These European courts decide appeals of invalidity and revocation decisions made by the EU IP Office (EUIPO) and interpret provisions of EU trade mark law when requested by a competent EU member state court (preliminary rulings).
Instead, the EU Trade Mark Regulation (EUTMR) provides for national courts to be designated as EU trade mark courts (EUTM courts) by each EU member state. These EUTM courts have the jurisdiction to hear EUTM infringement cases (including actions for infringement, threatened infringement and declarations of non-infringement). In addition, and as an exception to the jurisdiction of the EUIPO and CJEU on EUTM invalidity and revocation actions, the EUTM courts have jurisdiction over counterclaims for invalidity or revocation of an EUTM. For these matters, the EUTM courts’ jurisdiction is exclusive.
Although the EUTMR demands that the number of designated EUTM courts be as limited as possible, there are more than 60 first instance EUTM courts in the EU (with more than 30 in Germany and Italy alone).
Which EUTM court has jurisdiction?
The EUTMR sets out a jurisdictional cascade for EUTM infringement cases:
1.
An EUTM infringement action must be brought in the member state in which the defendant is domiciled or established.
2.
If the defendant is not domiciled or established in a member state, the EUTM infringement action must be brought in the member state in which the claimant is domiciled or established.
3.
If neither defendant nor claimant is domiciled or established in a member state, the action must be brought in Spain (as the seat of the EUIPO).
4.
Alternatively, an infringement action may be brought in the member state in which the act of infringement has been committed or threatened (but see below).
Two more rules are relevant:
- The EU courts which are afforded jurisdiction in accordance with points 1-3 above (based on domicile or establishment) can decide with EU-wide effect on infringements in any EU member state. The EU court identified in accordance with point 4 above (based on the place where the act of infringement occurs) only has jurisdiction over infringements in its own member state territory.
- In cases where there are more than one EUTM court in a member state, the national law provisions on venue determine the competent EUTM court. EUTMR provisions and national provisions are intertwined.
Which EUTM court has jurisdiction?
The EUTMR sets out a jurisdictional cascade for EUTM infringement cases:
1.
An EUTM infringement action must be brought in the member state in which the defendant is domiciled or established.
2.
If the defendant is not domiciled or established in a member state, the EUTM infringement action must be brought in the member state in which the claimant is domiciled or established.
3.
If neither defendant nor claimant is domiciled or established in a member state, the action must be brought in Spain (as the seat of the EUIPO).
4.
Alternatively, an infringement action may be brought in the member state in which the act of infringement has been committed or threatened (but see below).
Two more rules are relevant:
- The EU courts which are afforded jurisdiction in accordance with points 1-3 above (based on domicile or establishment) can decide with EU-wide effect on infringements in any EU member state. The EU court identified in accordance with point 4 above (based on the place where the act of infringement occurs) only has jurisdiction over infringements in its own member state territory.
- In cases where there are more than one EUTM court in a member state, the national law provisions on venue determine the competent EUTM court. EUTMR provisions and national provisions are intertwined.
More complexity please
These general principles are straightforward. But identifying the competent EUTM court can become a very complex task. Some examples:
- What exactly is an 'establishment' and how permanent or organised must it be? The case law has set a rather low bar. This opens up possibilities for forum shopping. And what exactly is the 'place where the act of infringement has been committed or threatened'? This question often arises when targeting online infringers whose websites are accessible from various member states.
- Which EUTM court is competent if there are several infringers with different roles in different EU member states? In such scenarios, the rules of the so-called Brussels-Ia-Regulation (the Recast Brussels Regulation) on jurisdiction in civil and commercial matters come into play. They provide that a defendant, being one of several defendants, can be sued in the courts of the place where any one of them is domiciled, provided the claims are so closely connected that it is expedient to determine them together to avoid the risk of irreconcilable judgments. Just recently, the Taylor Wessing team successfully argued that an exclusive distribution relationship establishes a sufficiently close connection between a Poland-based manufacturer and a German-based distributor of infringing products, with the result that our client was able to sue both parties in the German EUTM courts. This was despite the fact that the Polish manufacturer had not committed any infringing act in Germany.
What is the applicable law?
The competent EUTM court applies the EUTMR. Where a matter is not covered by the EUTMR, the EUTM courts must apply the relevant national law. While the grant of an injunction is explicitly provided for in the EUTMR, important remedies such as damages and the provision of information are not (and so are matters to be decided under relevant national law).
In scenarios where acts amounting to infringement were committed in several EU members states by different parties, the law applicable to non-EUTMR remedies is determined by identifying the 'origin' act which prompted the ensuing acts. To illustrate this, the CJEU has decided that, where an infringing product is advertised online and delivered to several member states, the origin act lies in the first sending of the offer; the law of the place where that act was committed hence applies, including to other allegedly infringing acts, such as acts of distribution committed elsewhere with the EU.
Impact on enforcement
Questions of jurisdiction, venue and applicable law can have a huge impact on the success, effectiveness, costs and timing of enforcing EUTMs in the EU, in particular if several parties and multiple member states are involved. For trade mark holders, it is vital to be guided to the best possible EUTM court and the most favourable trade mark and procedural law. Potential defendants should also be aware of the particular risks and costs involved in being forced to defend claims in overseas courts.
What is the applicable law?
The competent EUTM court applies the EUTMR. Where a matter is not covered by the EUTMR, the EUTM courts must apply the relevant national law. While the grant of an injunction is explicitly provided for in the EUTMR, important remedies such as damages and the provision of information are not (and so are matters to be decided under relevant national law).
In scenarios where acts amounting to infringement were committed in several EU members states by different parties, the law applicable to non-EUTMR remedies is determined by identifying the 'origin' act which prompted the ensuing acts. To illustrate this, the CJEU has decided that, where an infringing product is advertised online and delivered to several member states, the origin act lies in the first sending of the offer; the law of the place where that act was committed hence applies, including to other allegedly infringing acts, such as acts of distribution committed elsewhere with the EU.
Impact on enforcement
Questions of jurisdiction, venue and applicable law can have a huge impact on the success, effectiveness, costs and timing of enforcing EUTMs in the EU, in particular if several parties and multiple member states are involved. For trade mark holders, it is vital to be guided to the best possible EUTM court and the most favourable trade mark and procedural law. Potential defendants should also be aware of the particular risks and costs involved in being forced to defend claims in overseas courts.