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Wintersteiger –
Infringement sans frontières
The judgment of the Court of Justice of the
European Union (CJEU) in Wintersteiger AG v Products 4U
Sondermaschinenbau GmbH (Case
C-523/10) tackles the tricky question
of trade mark jurisdiction in the borderless world of online
advertising.
Facts
Wintersteiger is a well-established Austrian
manufacturer of accessories and servicing tools for skis and
snowboards. Products 4U, a German business, adopted
'Wintersteiger' as a keyword for its advertising on the Google.de
website. Wintersteiger sued in the Austrian courts for
infringement of its Austrian trade mark registration.
The question that was referred to the CJEU
related to jurisdiction. It is a general principle of EU law
that a defendant should be sued in the Member State where it is
domiciled. However, there are exceptions to this principle in
cases of trade mark infringement or other harmful conduct when an
action may also be brought in the courts 'for the place where the
harmful event occurred or may occur'. This has been held to
include both the place where the damage occurs and the place of the
event causing the damage. Furthermore, in the case of
infringement of a trade mark, the mark must be registered in the
jurisdiction 'where the harmful event occurred' for there to be any
infringement claim at all.
Products 4U argued that since separate Google
websites were available within both the .de and .at top-level
domains, the Google.de website should be considered as directed
exclusively at German consumers while the Google.at website would
be directed at Austrian consumers. As such, its use of the
'Wintersteiger' Adword was not a harmful event within Austria and
so the Austrian courts should have no jurisdiction over the
matter.
Wintersteiger responded by arguing that since
the German Google.de website was accessible to Austrian consumers,
who as German-speakers were also able to understand the
information, then the place of infringement must be the place at
which the advertising was presented consumers. A consumer in
Austria could search on Google.de for the term 'Wintersteiger' and,
due to the Adword, would see an advertisement for Products
4U. This meant that harm was done in the place where the
consumer was and not, as Products 4U argued, in the place where the
servers for Google.de were based. Since harm was done in
Austria, the Austrian courts should have jurisdiction.
The ruling
The Court sided with Wintersteiger and held
that where infringement was alleged in relation to a national trade
mark, as a result of the display of an keyword, then the Courts of
that Member State should have jurisdiction to consider the
infringement claim. This was the case even where online use
was under a different country-specific top-level domain name.
The Court also confirmed that an action could also be brought in
the home jurisdiction of the advertiser who had made unauthorised
use of the Adword.
Comments
The implications of the decision are largely
positive. It would be very detrimental to IP enforcement in
the EU if it was possible to advertise into a country from 'across
the online border' by using another top-level domain and thereby
fall out of the relevant jurisdiction for the purpose of trade mark
infringement. However, there is also an added degree of
exposure for businesses in that online advertising within a
country-specific top-level domain may spill over into other
jurisdictions unintentionally and potentially result in
infringement in those jurisdictions.
In such a situation a claimant would still
need to show clear infringement within that jurisdiction, the mere
fact of an advert being accessible would not necessarily constitute
infringement if it was clear, for example due to linguistic or
geographical barriers, that no consumer in that jurisdiction could
or would realistically access the advertised goods or
services. Nonetheless, in borderline cases, for example where
territories share a common-language, businesses advertising online
would be well-advised to either undertake clearance in the
potential spill-over jurisdiction or to take steps, such as
limiting website access, which will prevent inadvertent
infringement.
Hastings
Guise, senior associate, IP Protection and IP Enforcement and
Litigation at Field Fisher Waterhouse
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