BGH; 2017-11-09; I ZR 164/16
Decision by national courts in the field of European Union law — ECLI:DE:BGH:2017:091117UIZR164.16.0
Date: 2017-11-09
Subject matter: Judicial cooperation in civil matters
Origin: Germany

82017DE1109(52)_ENG_SUMJURE
JURE summary
JURE summary
The plaintiff manufactures perfumes and distributes them worldwide. It is the owner or exclusive licensee of several European Union trademarks. The defendant trades in perfume and cosmetic products and sells them online on its website, which was also in German language – even though not through direct sale, but contact details are provided. It is based in Italy. As the defendant distributed products into Germany, the plaintiff sent a warning letter and after that filed a lawsuit for breach of trademark. The defendant is accused of several acts of infringement and for this reason the plaintiff argued that a damaging event had occurred in several places.
The Landgericht München (hereinafter ‘the Court of First Instance’) dismissed the action as inadmissible due to a lack of international jurisdiction. The Oberlandesgericht München (hereinafter ‘the Court of Appeal’) ruled that the action was admissible, while arguing with Article 96(a) of Regulation (EC) No 207/2009 (1) according to which the proprietor may prohibit third parties from using a sign which infringes his trademark right. The list of forms of use which the trademark proprietor may prohibit in Article 9(2) of Regulation (EC) No 207/2009 is not exhaustive. In particular, the Court of Appeal cited case C-236/08 (2) according to which, electronic forms of business transactions and advertising may typically lead to acts of use beyond examples in the catalogue through the use of information technology.
The Bundesgerichtshof (hereinafter ‘the Supreme Court’) found the appeal of the defendant relevant, abolished the Court of Appeal's decision and left the dismissive judgment of the Court of First Instance in effect.
The Supreme Court argued that it was not necessary to consider each individual act of infringement, but to make an overall assessment of its conduct in order to determine the place where the original infringing act which gave rise to the alleged conduct was committed or threatened. In case of an internet site addressed to purchasers in other Member States, the place of the event giving rise to the international jurisdiction within the meaning of Regulation (EC) No 207/2009, is the place where the process of publication of the offer by the economic operator on its website was initiated and not the place where the internet site can be accessed. Where contact with purchasers in other Member States is established by the trader sending product and price lists by email, the place of the event giving rise to the damage is the place from where the email is sent.
The German language alone of the website of the defendant does not justify the assumption that the infringing act in the meaning of article 97(5) of Regulation 207/2009 was committed in Germany. Contrary to the opinion of the Court of Appeal, the decisive factor for the assessment of international jurisdiction is not Article 7(2) of the Brussels I Regulation (recast) (3), but Article 5(3) of the Brussels I Regulation (4). In substance, this does not make any difference because of the same wording, but the temporal aspect requires the application of the Brussels I Regulation.
(1) Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark.
(2) Judgment of the Court of Justice of 23 March 2010, Google v. Louis Vuitton, C-236/08 to C-238/08, ECLI:EU:C:2010:159.
(3) Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.
(4) Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.