The Jurisdiction Regulation, trademarks and the internet – The Court of Justice in Wintersteiger

I have already reported recently on the application of the Brussels I Regulation and the internet [see here for my confused state on the Judgment in ‘G’]. In Wintersteiger (Judgment of 19 April 2012) the applicant is the proprietor of an Austrian trade mark. The defendant was a competitor established in Germany, who had registered Wintersteiger’s name as an AdWord on Google’s German search service. Whence users of google.de entering ‘Wintersteiger’ (looking for that make’s ski and snowboarding service tools) receive a link to Wintersteiger’s website as first search result, but also as the first AdLink on the right hand side of the screen, an advert for and link to the competitor’s website – which Wintersteiger considered an abuse of its trademark.

The case once again raised the question how one applies Article 5(3)’s ‘place where the harmful event occurred’ (since Mines de Potasse split in ‘place where the event giving rise to the damage’ and ‘place where the damage’ occurred as being two alternative connecting factors)  in an internet context.

The judgment of the Court of Justice confirms that the connecting factor ‘centre of interests’ in Kylie Minogue and eDate Advertising only holds for infringement of personality rights in an internet context. Trademark violation is distinguished, on the grounds that rebus sic stantibus intellectual property rights are protected on a territorial basis. The Court confines the ‘place where the damage occurred’ as the Member State in which the trade mark is registered. For the ‘place where the event giving rise to the damage’, the Court upheld ‘place of establishment of the advertiser’ as the jurisdictional basis (the Advocate General’s ‘means necessary for producing, a priori, an actual infringement of a trade mark in another Member State’ is a  more generic criterion however the Court did not uphold this as such).

Precedent value of the judgment may be limited due to the specific facts of the case and the questions put to the Court (for non-EU readers: the Court of Justice practises judicial economy, hence questions not specifically asked are not entertained). In particular, the conclusion may only hold absolutely where there is only one trade mark held, in only one Member State (for EU readers and non-EU readers alike: EU trademark protection is a lot less harmonised than one may have assumed). The referring court moreover did not flag the many issues surrounding provisionary measures and intellectual property rights (see Article 31 of the Regulation and the Opinion of the same AG in Solvay, on which I report here).

Geert.