Copyright/Trademark Infringement, Jurisdiction and the Internet

The Court of Justice of the European Union (CJEU) has addressed the issue of jurisdiction in relation to allegations of copyright infringement online. In cases such as: Pinckney and Hejduk, the Court held that accessibility of the allegedly infringing content is one of the criteria to determine jurisdiction within Article 7(2) of the Brussels I Regulation.

The question subsequently arises as to the online infringement of Community trade marks, soon to be called EU trade marks. There is the possibility to bring proceedings before the courts of the Member State of the defendant or claimant as well as proceedings to be brought "in the courts of the Member State in which the act of infringement has been committed or threatened", pursuant to Article 97(5) EUTMR.

It has been held previously, for example, in Italy and Scotland, that jurisdiction would arise any time the website in question was being accessed in which the trademark is registered and the damage stemming from that infringement is inflicted in that jurisdiction.

Whether there is a need to require that the activity be intended to have effects within the territory of the Member State asserting jurisdiction, is actually the criterion to employ in online EUTM infringement cases. However this has not yet been confirmed by the CJEU.

The EUTMR lacks any specific guidance, it is uncertain how the Court will interpret Article 97(5) EUTMR if and when given the opportunity to do so. However it is arguable that such an interpretation of Article 97(5) EUTMR – if recognised by the CJEU could trigger some unwanted consequences.

The options available to the claimant would be reduced in the sense that the criterion in Article 97(5) EUTMR would likely to be the same as that of the place of establishment of the defendant. The defects of limiting jurisdiction only to the courts located in the place of the actual infringement have been highlighted by both Advocates General Darmon and Léger and the CJEU in Shevill, when it thought that this place would coincide with the place where the defendant is based. This would ultimately limit jurisdiction only to this ground. This would make the special rule in Article 7(2) Brussels I recast (and consequently also Article 97(5) EUTMR) meaningless.

However, in Article 97(5) EUTMR situations, jurisdiction would exist even without the need to prove that the allegedly infringing activities of the defendant where directed at consumers who were based in that particular Member State.