Judgment;Summary — ECLI:EU:C:2023:343
Date: 2023-04-27
Language of the case: Finnish
Court formation: Fifth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Reference for a preliminary ruling
Origin: Finland

Translation C-104/22 – 1 
Case C-104/22 
Request for a preliminary ruling 
Date lodged: 
15 February 2022 
Referring court:  
Markkinaoikeus (Finland) 
Date of the decision to refer:  
14 February 2022 
Applicant:  
Lännen MCE Oy 
Defendants:  
Berky GmbH 
Senwatec GmbH & Co. KG 
  
MARKKINAOIKEUS (Market 
Court, Finland) 
ORDER […] 
 14 February 2022 […] 
APPLICANT Lännen MCE Oy 
DEFENDANTS Berky GmbH 
Senwatec GmbH & Co. KG 
SUBJECT 
MATTER 
Infringement of an EU trade mark; Request to the Court of 
Justice of the European Union for a preliminary ruling 
under Article 267 of the Treaty on the Functioning of the 
European Union 
EN 
REQUEST FOR A PRELIMINARY RULING OF 14. 2. 2022 – CASE C-104/22 
 
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SUBJECT MATTER OF THE DISPUTE 
1 The action brought by Lännen MCE Oy before the Market Court concerns the 
issue whether the defendants, Berky GmbH (‘Berky’) and Senwatec GmbH & Co. 
KG (‘Senwatec’), both of which have their registered offices in Germany, have 
infringed EU trade mark No 003185758 WATERMASTER. 
2 The request for a preliminary ruling concerns the conditions under which the 
alleged acts of infringement were committed in Finland, within the meaning of 
Article 125(5) of Regulation (EU) 2017/1001 of the European Parliament and of 
the Council of 14 June 2017 on the European Union trade mark (‘EU Trade Mark 
Regulation’), and, therefore, the international jurisdiction of the Market Court to 
hear the action. 
3 In particular, the question arises as to the conditions under which it may be 
concluded that the electronically published [Or. 2] advertising, to which the 
alleged acts of infringement relate, was directed at a Finnish target group, 
irrespective of whether the geographical area where the products in question were 
to be supplied was separately specified, in express terms, together with or in 
connection with the advertising. 
RELEVANT FACTS 
Background to the dispute 
4 Lännen MCE Oy, which has its registered office in Finland, is the proprietor of 
EU trade mark No 003185758 WATERMASTER. 
5 The defendant companies, Berky and Senwatec, belong to the same group. 
Although the two companies are involved in different alleged acts of 
infringement, those actions are being heard together in one set of proceedings. As 
the alleged acts of infringement are different, they are dealt with separately below. 
6 As regards Senwatec, the allegation of infringement of the EU trade mark 
WATERMASTER is based on an advertisement displayed as a search result, in 
August 2016, in a search carried out using the keyword ‘watermaster’ on the 
website Google.fi. 
7 The documentary evidence submitted in the case shows that the first result of the 
Google search was an advertising link for Senwatec’s multi-purpose dredgers, 
entitled ‘Watermaster – Multipurpose amphibian dredgers -senwatec.de’. The 
above search result was displayed together with the word ‘Ad’ and was separated 
from the other search results by a line. The printout of the above search shows that 
the person who ran the search was located in Helsinki, Finland, as evidenced by 
that person’s IP address. Neither the advertising link displayed as a search result 
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nor the associated text contains any elements specifically referring to Finland or 
indeed the geographical area where the products were to be supplied. [Or. 3] 
8 The abovementioned advertising link led to Senwatec’s website, 
www.senwatec.de. That website contained, inter alia, a text in English stating that 
Senwatec’s products are used worldwide: ‘The machines and solutions from the 
company Senwatec are worldwide in use. To give you an overview of the area of 
operations we created for you an own Senwatec-world map’. The text was 
accompanied by an image of a world map, highlighting in darker colours the 
countries in which Senwatec claimed to be active. Most of Western Europe, all of 
North America and several Asian and African countries appeared in a darker 
colour on the map. Finland, however, did not appear in a darker colour. Aside 
from the foregoing, no further statements regarding the website’s content 
concerning Senwatec’s area of activity or the area where its products were to be 
supplied have been made in the proceedings. 
9 As regards Berky, Lännen MCE Oy’s claim that the EU trade mark 
WATERMASTER has been infringed is based on the fact that, between 2005 and 
2019, a ‘meta tag’ consisting of the keyword ‘watermaster’ had been used on the 
photo-sharing service Flickr.com in connection with images presenting various 
Berky machines. According to Lännen MCE Oy, a search on Google.fi using the 
search term ‘watermaster amphibious dredger’ produced a link to the file-sharing 
service Flickr.com, where there were images of Berky machines. The link 
displayed as a search result was not an advertising link, but an ‘organic’ search 
result. 
10 The captions for the images on the Flickr.com online service included the names 
of the machines in English and, in addition, their model numbers. Berky’s logo 
also appeared in connection with the images. Each image was accompanied by 
numerous meta tags consisting of keywords in English and other languages. One 
such meta tag was ‘watermaster’. It was also [Or. 4] possible to register as a 
follower of Berky’s content on Flickr.com. 
11 No information specifically referring to Finland accompanied the link displayed in 
the Google.fi search result or the images on the photo-sharing service Flickr.com. 
Nor were the images accompanied by any other information expressly specifying 
the geographical area where the Berky machines depicted in the images were to be 
supplied. 
Proceedings before the Market Court 
12 The applicant, Lännen MCE Oy, submitted that the alleged acts of infringement 
took place in Finland and that, therefore, the Market Court, as the EU trade mark 
court, has jurisdiction to hear the infringement action on the basis of 
Article 125(5) of the EU Trade Mark Regulation. 
REQUEST FOR A PRELIMINARY RULING OF 14. 2. 2022 – CASE C-104/22 
 
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13 According to Lännen MCE Oy, both defendants’ marketing activities on the 
internet were related to the territory of Finland and were visible to Finnish 
consumers and traders. It submits that Berky’s and Senwatec’s products are sold 
throughout the world. The English-language advertising was targeted not only at 
the German target group, but at an international target group without restriction, 
that is to say, in all countries in which the advertising in question was visible. 
Since the advertising was not targeted at a single country, it was targeted at every 
country in which it was visible. According to Lännen MCE Oy, the fact that the 
infringing use had been visible to Finnish internet users is decisive in itself. 
14 In their defence, the defendants Berky and Senwatec challenged the international 
jurisdiction of the Market Court in the present dispute. They take the view that the 
alleged acts of infringement did not take place in Finland. On that basis, the 
defendants have requested, primarily, that the Market Court dismiss the action as 
inadmissible. [Or. 5] 
15 Berky and Senwatec argued that they neither targeted their marketing at Finland 
nor offered their products for sale in Finland and, further, Finland is not part of 
their market area. They submitted that the Google search result and the word 
‘watermaster’ appearing in it did not indicate that the products were marketed in 
connection with Finland, nor did the marketing otherwise relate to Finland. The 
fact that the search was carried out via the Google.fi website has no bearing 
whatsoever on the assessment. The Berky images on the Flickr.com website did 
not even constitute advertisements or offers for sale. Therefore, the alleged acts of 
infringement did not relate to Finland. In that respect, the decisive factor is not 
whether the internet content alleged to constitute an act of infringement was 
visible in Finland, but whether such content has a relevant connection with 
Finland. 
16 The parties disagree as to whether the map depicted on Senwatec’s website shows 
that the company delimited the geographical area of supply of its products to the 
effect that they are not supplied to Finland. According to Senwatec, the map is 
evidence that Finland is not part of the market area for the company’s products 
and, according to the company’s own information, it does not have any authorised 
dealers or distributors in Finland. According to Lännen MCE Oy, the markets for 
Senwatec’s products is global and Senwatec has also been active in countries not 
highlighted on the abovementioned map. In addition, witness testimony, according 
to which the abovementioned world map relates to not only Senwatec’s area of 
activity but also that of Berky, was also submitted in the dispute. 
LEGISLATION AND CASE-LAW 
EU Trade Mark Regulation 
17 The EU Trade Mark Regulation has been in force since 1 October 2017. In so far 
as the alleged infringements on which the action is based took place before that 
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date, the Market Court takes the view that Council Regulation (EC) No 207/2009 
on the Community trade mark – which was in force until 30 September 2017, and 
thus at the time of the alleged infringements – as [Or. 6] amended by, inter alia, 
Regulation (EU) 2015/2424, which entered into force on 23 March 2016 
(hereinafter referred to together as ‘the former EU Trade Mark Regulation’), 
applies. 
18 Lännen MCE Oy’s infringement action was brought before the Market Court on 
28 January 2020. The Market Court takes the view that, contrary to the 
abovementioned statements, its jurisdiction is governed by the current EU Trade 
Mark Regulation, which has the same content as the former EU Trade Mark 
Regulation, as set out below. 
19 According to Article 124(a) of the EU Trade Mark Regulation, the EU trade mark 
courts are to have exclusive jurisdiction for all infringement actions relating to EU 
trade marks. 
20 According to Article 125(5) of the EU Trade Mark Regulation, proceedings in 
respect of the actions and claims referred to in Article 124, with the exception of 
actions for a declaration of non-infringement of an EU trade mark, may also be 
brought in the courts of the Member State in which the act of infringement has 
been committed or threatened, or in which an act referred to in Article 11(2) has 
been committed. 
21 According to Article 126(2) of the EU Trade Mark Regulation, an EU trade mark 
court whose jurisdiction is based on Article 125(5) is to have jurisdiction only in 
respect of acts committed or threatened within the territory of the Member State in 
which that court is situated. 
Case-law of the Court 
22 In the judgment of 5 September 2019, AMS Neve and Others (C-172/18, 
EU:C:2019:674), which concerned the interpretation of Article 97(5) of the 
former EU Trade Mark Regulation, which corresponds, in substance, to 
Article 125(5) [Or. 7] of the current EU Trade Mark Regulation, the Court 
considered the question as to the Member State in which an infringement takes 
place, in the case of advertisements and offers for sale published electronically 
with respect to products bearing a trade mark alleged to have been infringed. 
23 According to paragraph 47 of the judgment, the alleged acts of infringement were 
committed in the territory where the consumers or traders to whom that 
advertising and those offers for sale are directed are located, notwithstanding the 
fact that the defendant is established elsewhere, that the server of the electronic 
network that he or she uses is located elsewhere, or even that the products that are 
the subject of such advertising and offers for sale are located elsewhere. 
REQUEST FOR A PRELIMINARY RULING OF 14. 2. 2022 – CASE C-104/22 
 
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24 According to paragraph 54 of that judgment, acts of infringement relating to an 
EU trade mark must be held to have been ‘committed’ in the territory where they 
can be classified as advertising or as offers for sale, namely where their 
commercial content has in fact been made accessible to the consumers and traders 
to whom it was directed. Whether the result of that advertising and those offers for 
sale was that, thereafter, the defendant’s products were purchased is, however, 
irrelevant. 
25 It is clear, from paragraph 56 of the judgment, that the question as to the Member 
State in which consumers or traders to whom the advertising and offers for sale 
contained on the website or platforms are targeted must be examined by the court, 
in particular, on the basis of the information contained on that website and those 
platforms with respect to the geographical areas where the products at issue were 
to be delivered. 
26 Paragraph 56 of the abovementioned judgment refers to paragraphs 64 and 65 of 
the judgment of 12 July 2011, L’Oreal and Others (C-324/09, EU:C:2011:474), 
which examined the conditions under which the proprietor of an EU trade mark is 
entitled to prohibit the offering for sale of products bearing the trade mark [Or. 8] 
on an online marketplace. 
27 According to paragraph 64 of the judgment in L’Oreal, it must, however, be made 
clear that the mere fact that a website is accessible from the territory covered by 
the trade mark is not a sufficient basis for concluding that the offers for sale 
displayed there are targeted at consumers in that territory. Indeed, if the fact that 
an online marketplace is accessible from that territory were sufficient for the 
advertisements displayed there to be within the scope of the legislation on the EU 
trade mark, websites and advertisements which, although obviously targeted 
solely at consumers in third States, are nevertheless technically accessible from 
EU territory would wrongly be subject to EU law. 
28 According to paragraph 65 of the judgment in L’Oreal, it therefore falls to the 
national courts to assess, on a case-by-case basis, whether there are any relevant 
information from which it may be concluded that an offer for sale, displayed on an 
online marketplace accessible from the territory covered by the trade mark, is 
targeted at consumers in that territory. When the offer for sale is accompanied by 
details of the geographic areas to which the seller is willing to dispatch the 
product, that type of detail is of particular importance in that assessment. 
29 According to paragraph 58 of the judgment in AMS Neve, the interpretation of the 
earlier provision corresponding to Article 125(5) of the EU Trade Mark 
Regulation must, it is true, be independent of the interpretation of Article 5(3) of 
Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and 
the recognition and enforcement of judgments in civil and commercial matters, 
which was adopted by the Court with respect to actions alleging infringement of 
national marks. Nonetheless, the interpretations of the concepts of ‘Member State 
in which the act of infringement has been committed’ and ‘the place where the 
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harmful event occurred’, in those provisions, must have a degree of consistency. 
[Or. 9] 
30 According to paragraph 39 of the judgment of 19 April 2012, Wintersteiger 
(C-523/10, EU:C:2012:220), Article 5(3) of Regulation No 44/2001 must be 
interpreted as meaning that an action relating to infringement of a trade mark 
registered in a Member State because of the use, by an advertiser, of a keyword 
identical to that trade mark on a search engine website operating under a country-
specific top-level domain of another Member State may be brought before either 
the courts of the Member State in which the trade mark is registered or the courts 
of the Member State of the place of establishment of the advertiser. 
THE NEED FOR A PRELIMINARY RULING 
31 In the light of the case-law of the Court, set out above, when examining the 
question as to which Member State is the State in which consumers or traders, to 
whom advertising or offers for sale published electronically on a website are 
directed, are situated, account must be taken, in particular, of the details relating to 
the geographical areas where the products are to be supplied. 
32 It can be inferred from the case-law that other circumstances may be taken into 
account in that examination, in addition to the details relating to the geographical 
areas where the products are to be supplied. That may be particularly important in 
the case where a geographical area where the products are to be supplied is either 
not specified at all or can be derived only indirectly from other circumstances. 
However, it remains unclear what those other circumstances might be. 
33 It follows from the Advocate General’s Opinion in AMS Neve (EU:C:2010:276, 
point 89) that, in determining jurisdiction on the basis of the place where the act of 
infringement occurred, factors other than information relating to the geographical 
areas where the products are to be supplied can be of particular importance. 
According to that opinion, those factors may include, inter alia: the fact that an 
offer and an advertisement refer expressly to the [Or. 10] public of a Member 
State, that they are available on a website with a country-specific top-level domain 
of that Member State, that the prices are given in the national currency or that 
telephone numbers on such a website contain the national prefix of the State 
concerned. According to the Advocate General’s Opinion, that list of factors is 
neither exhaustive nor exclusive. In the preliminary ruling in AMS Neve, the Court 
did not make any statements regarding the importance of those other factors. 
34 First, it is unclear whether the nature of the products covered by the advertising 
may be taken into account in the assessment of which Member State is that in 
which the consumers or traders, to whom an advertisement or offer for sale is 
directed, are situated, and, therefore, as to which Member State is that in which 
the alleged act of infringement was committed in accordance with Article 125(5) 
of the EU Trade Mark Regulation. In the present case, Lännen MCE Oy 
submitted, inter alia, that the area in which Berky and Senwatec marketed their 
REQUEST FOR A PRELIMINARY RULING OF 14. 2. 2022 – CASE C-104/22 
 
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products was the whole world and that the related advertising was directed at all 
the countries in which the advertising was visible. 
35 In the event that it is held that the advertising was related to the whole world and 
thus also to the whole territory of the European Union, it is unclear whether it can 
be held that the advertising related to a single Member State. With regard to 
Berky, the question that remains to be decided as a preliminary matter in the 
present case is whether the presentation of images of Berky’s machines on the 
photo-sharing service Flickr.com constitutes advertising in the light of the facts of 
the case. 
36 It is clear from point 90 of the Advocate General’s Opinion in AMS Neve 
(EU:C:2019:276) that a general indication of the geographical area of supply, 
which covers the whole of the European Union, does not enable the audience or 
audiences specifically targeted to be identified. If a general indication of that kind 
was given any weight, the person responsible for the alleged infringement could 
be sued in the courts of all of the Member States. The Court [Or. 11] did not 
comment on that question in its preliminary ruling in AMS Neve. 
37 In the abovementioned judgment in Wintersteiger, the top-level domain of the 
search engine website was deemed to be of importance as regards jurisdiction. 
However, that judgment concerns a national trade mark and differs from the 
present case in other respects also. 
38 In the light of the foregoing, it remains unclear whether the question of 
jurisdiction under Article 125(5) of the EU Trade Mark Regulation may be 
determined by reference to the Member State under whose top-level domain the 
search engine website on which the advertisement is available is operated. 
39 In particular, it is unclear whether it may be concluded that advertising published 
electronically by Company A, established in Member State X, is directed at 
consumers or traders in Member State Y, where Company A has used a sign 
identical to an EU trade mark in an advertisement or as a keyword on a search 
engine website operated under the top-level domain of Member State Y. 
40 If the circumstances set out above are relevant in the present case, it is also 
unclear whether the EU trade mark courts of Member State Y have jurisdiction to 
rule on an infringement action on the basis of those circumstances alone, or 
whether there are further requirements for such jurisdiction. 
41 The answers to those questions of interpretation are necessary for the resolution of 
the dispute in the main proceedings before the Market Court. 
QUESTIONS REFERRED FOR A PRELIMINARY RULING 
After affording the parties the opportunity to submit observations on the content 
of the request for a preliminary ruling, the Market Court has decided to stay the 
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[Or. 12] proceedings and to refer the following questions to the Court of Justice 
of the European Union for a preliminary ruling under Article 267 TFEU: 
Company A is established in Member State X, where it has its registered office, 
and has used on a website a sign identical to an EU trade mark belonging to 
Company B, in advertising or as a keyword. 
1. In the situation described above, may it be concluded that the advertising is 
directed at consumers or traders in Member State Y, where Company B has 
its registered office, and does an EU trade mark court in Member State Y 
have jurisdiction to hear an action for infringement of an EU trade mark 
under Article 125(5) of the EU Trade Mark Regulation where, in the 
advertising published electronically or on an advertiser’s website connected 
to that advertising via a link, the geographical area where the goods are to be 
supplied is not specified, at least not expressly, or no individual Member 
State is expressly excluded from that area? May the nature of the goods to 
which the advertising relates and the fact that the market for Company A’s 
products is allegedly global and thus covers the entire territory of the 
European Union, including Member State Y, be taken into account in that 
respect? 
2. May it be concluded that the above advertising is directed at consumers or 
traders in Member State Y if it appears on a search engine website operated 
under the national top-level domain of Member State Y? 
3. If Question 1 or 2 is answered in the affirmative, what other factors, if any, 
should be taken into account in determining whether the advertisement is 
directed at consumers or traders in Member State Y? [Or. 13] 
[…] [procedural details] 
APPEALS 
No separate appeal lies against the present order. 
[…] [formation of the court] […] [recipients of the order]