Case C-523/10

Wintersteiger AG

v

Products 4U Sondermaschinenbau GmbH

(Reference for a preliminary ruling from the Oberster Gerichtshof)

‛Regulation (EC) No 44/2001 — Jurisdiction and the enforcement of judgments in civil and commercial matters — Jurisdiction ‘in matters relating to tort, delict or quasi-delict’ — Determination of the place where the harmful event occurred or may occur — Website of a referencing service provider operating under a country-specific top-level domain of a Member State — Use, by an advertiser, of a keyword identical to a trade mark registered in another Member State’

Summary of the Judgment

Judicial cooperation in civil matters — Jurisdiction and the enforcement of judgments in civil and commercial matters — Regulation No 44/2001 — Special jurisdiction — Jurisdiction in tort, delict or quasi-delict — Place where the damage occurred and the place of the event giving rise to it

(Council Regulation No 44/2001, Art. 5, para. 3)

Article 5(3) of Regulation No 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters 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.

Firstly, the protection afforded by the registration of a national mark is, in principle, limited to the territory of the Member State in which it is registered, so that, in general, its proprietor cannot rely on that protection outside the territory. Both the objective of foreseeability and that of sound administration of justice militate, therefore, in favour of conferring jurisdiction to hear a claim of infringement of a national mark, in respect of the damage occurred, on the courts of the Member State in which the right at issue is protected.

Secondly, it is the activation by the advertiser of the technical process displaying, according to pre-defined parameters, the advertisement which it created for its own commercial communications that should be considered to be the event giving rise to an alleged infringement, and not the display of the advertisement itself. Since it is a definite and identifiable place, both for the applicant and for the defendant, and is therefore likely to facilitate the taking of evidence and the conduct of the proceedings, the place of establishment of the advertiser is the place where the activation of the display process is decided.

(see paras 25, 27, 34, 37, 39, operative part)

Case C-523/10

Wintersteiger AG

v

Products 4U Sondermaschinenbau GmbH

(Reference for a preliminary ruling from the Oberster Gerichtshof)

‛Regulation (EC) No 44/2001 — Jurisdiction and the enforcement of judgments in civil and commercial matters — Jurisdiction ‘in matters relating to tort, delict or quasi-delict’ — Determination of the place where the harmful event occurred or may occur — Website of a referencing service provider operating under a country-specific top-level domain of a Member State — Use, by an advertiser, of a keyword identical to a trade mark registered in another Member State’

Summary of the Judgment

Judicial cooperation in civil matters — Jurisdiction and the enforcement of judgments in civil and commercial matters — Regulation No 44/2001 — Special jurisdiction — Jurisdiction in tort, delict or quasi-delict — Place where the damage occurred and the place of the event giving rise to it

(Council Regulation No 44/2001, Art. 5, para. 3)

Article 5(3) of Regulation No 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters 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.

Firstly, the protection afforded by the registration of a national mark is, in principle, limited to the territory of the Member State in which it is registered, so that, in general, its proprietor cannot rely on that protection outside the territory. Both the objective of foreseeability and that of sound administration of justice militate, therefore, in favour of conferring jurisdiction to hear a claim of infringement of a national mark, in respect of the damage occurred, on the courts of the Member State in which the right at issue is protected.

Secondly, it is the activation by the advertiser of the technical process displaying, according to pre-defined parameters, the advertisement which it created for its own commercial communications that should be considered to be the event giving rise to an alleged infringement, and not the display of the advertisement itself. Since it is a definite and identifiable place, both for the applicant and for the defendant, and is therefore likely to facilitate the taking of evidence and the conduct of the proceedings, the place of establishment of the advertiser is the place where the activation of the display process is decided.

(see paras 25, 27, 34, 37, 39, operative part)