Owners of Union trademarks can also file infringement suits in Germany if the potential trademark infringers have set in motion their advertising measures, which are also directed at German customers, via the Internet in another EU country. This was decided by the European Court of Justice (ECJ) on 5 September (in case C-172/18).
With its ruling, the ECJ opposes a decision by the Federal Court of Justice (BGH) in 2017 (ruling dated 9 November 2017 - I ZR 164/16), which considerably restricted the jurisdiction of German courts in the case of infringement of Union trademarks in Germany: The BGH took the view that in the case of trademark-infringing offers and advertising for goods and services on the Internet addressed to customers in Germany, the German courts would not have jurisdiction if the respective publication had not been set in motion in Germany. This concerned the interpretation of the provision of Article 97(5) of Union Trademark Regulation (EC) No 207/2009 (now: Article 125(5) of Regulation (EU) 2017/1001). Trademark owners who considered their rights in Germany to have been infringed could therefore only assert their rights before the corresponding foreign courts as a result of the BGH ruling. At the same time, the BGH's decision led to a weakening of the Union trademark compared to the national German trademark. This can be registered alongside the Union trademark, but only offers protection in Germany. For the German trademark, the BGH considered that the German courts had jurisdiction in the same circumstances. In this case, jurisdiction is governed by Art. 5 No. 3 Brussels I Regulation (today: Art. 7 No. 2 Brussels Ia Regulation).
As a result of the decision of the ECJ, the BGH will no longer be able to uphold its case law. "This is good news for German companies", says Dr. Reinhard Fischer, attorney at Cohausz & Florack. "The ruling of the European Court of Justice makes it easier for them to take action against infringements of Union trademarks in Germany. In the case of advertising on the Internet directed at German customers, the German courts will again be available as an alternative place of jurisdiction". However, it must be considered that German courts can rule against companies based in European Union countries other than Germany only concerning infringements in Germany and accordingly only pronounce Germany-wide injunctions. Legal action at the trademark infringer's place of business in another EU country, on the other hand, makes it possible to obtain Union-wide injunctions.
In addition to Union trademarks, the decision of the European Court of Justice is also relevant for Community designs, i.e. for design protection rights valid throughout the EU. The Regulation applicable to Community designs provides for a special provision identical to Art. 97 (5) of the Union Trademark Regulation (EC) No. 207/2009.
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