CELEX: 62018CJ0172
Language: en
Date: 2019-09-05
Title: Judgment of the Court (Fifth Chamber) of 5 September 2019.#AMS Neve Ltd and Others v Heritage Audio SL and Pedro Rodríguez Arribas.#Reference for a preliminary ruling — EU trade mark — Regulation (EC) No 207/2009 — Article 97(5) — Jurisdiction — Infringement proceedings — Jurisdiction of the courts of the Member State in which ‘the act of infringement has been committed’ — Advertising and offers for sale displayed on a website and on social media platforms.#Case C-172/18.

JUDGMENT OF THE COURT (Fifth Chamber)
5 September 2019 (*)
(Reference for a preliminary ruling — EU trade mark — Regulation (EC) No 207/2009 — Article 97(5) — Jurisdiction — Infringement proceedings — Jurisdiction of the courts of the Member State in which ‘the act of infringement has been committed’ — Advertising and offers for sale displayed on a website and on social media platforms)
In Case C‑172/18,
REQUEST for a preliminary ruling under Article 267 TFEU from the Court of Appeal (England & Wales) (Civil Division), made by decision of 12 February 2018, received at the Court on 5 March 2018, in the proceedings

AMS Neve Ltd,

Barnett Waddingham Trustees,

Mark Crabtree

v

Heritage Audio SL,

Pedro Rodríguez Arribas,

THE COURT (Fifth Chamber),
composed of E. Regan, President of the Chamber, C. Lycourgos, E. Juhász, M. Ilešič (Rapporteur) and I. Jarukaitis, Judges,
Advocate General: M. Szpunar,
Registrar: L. Carrasco Marco, Administrator,
having regard to the written procedure and further to the hearing on 17 January 2019,
after considering the observations submitted on behalf of:
–        AMS Neve Ltd,  Barnett Waddingham Trustees and Mr Crabtree, by M. McGuirk and E. Cronan, Solicitors, and by J. Moss, Barrister, 
–        Heritage Audio SL and Mr Rodríguez Arribas, by A. Stone and R. Crozier, Solicitors, and by J. Reid, Barrister,
–        the German Government, initially by T. Henze, M. Hellmann and J. Techert, and subsequently by M. Hellmann and J. Techert, acting as Agents,
–        the European Commission, by J. Samnadda, É. Gippini Fournier and M. Wilderspin, acting as Agents,
after hearing the Opinion of the Advocate General at the sitting on 28 March 2019,
gives the following

Judgment

1        This request for a preliminary ruling concerns the interpretation of Article 97(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1).

2        The request has been made in proceedings where the opposing parties  are AMS Neve Ltd, Barnett Waddingham Trustees (‘BW Trustees’) and  Mr Mark Crabtree, on the one hand,  and Heritage Audio SL and  Mr Pedro Rodríguez Arribas, on the other,  concerning an infringement claim  arising from the alleged  wrongful use  of rights conferred by, inter alia,  an  EU trade mark.
 Legal context

3        Regulation (EC) No 207/2009, which had repealed and replaced Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), was amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21), which entered into force on 23 March 2016.  It was subsequently repealed and replaced, with effect from 1 October 2017, by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).  However, given the date when the  action claiming the  infringement at issue  in the main proceedings was brought, this reference for a preliminary ruling  shall be examined  having regard to  Regulation  No 207/2009, in its initial version.

4        Recital 17 of Regulation No 207/2009 states:
‘Contradictory judgments should be avoided in actions which involve the same acts and the same parties and which are brought on the basis of a [European Union]  trade mark and parallel national trade marks. …’

5        Article 9(1)  and  (2) of that regulation  provided:
‘1.      The [European Union] trade  mark shall confer on the proprietor exclusive rights therein: The proprietor shall be entitled to prevent all third parties not having his/her consent from using in the course of trade:
(a)      any sign which is identical with the [European Union]  trade mark in relation to goods or services which are identical with those for which the [European Union]  trade mark is registered;
(b)      any sign where, because of its identity with, or similarity to, the [European Union] trade mark and the identity or similarity of the goods or services covered by the [European Union] trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
…
2.      The following, inter alia, may be prohibited under paragraph 1:
…
(b)      offering the goods, putting them on the market …  under that sign …;
…
(d)      using the sign … in advertising.’

6        Article 94  of  Regulation  No 207/2009 stated:
‘1.      Unless otherwise specified in this Regulation, [Council] Regulation (EC) No 44/2001 [of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (OJ  2001 L 12, p. 1)] shall apply to proceedings relating to [European Union]  trade marks and applications for [European Union]  trade marks, as well as to proceedings relating to simultaneous and successive actions on the basis of [European Union]  trade marks and national trade marks.
2.      In the case of proceedings in respect of the actions and claims referred to in Article 96:
(a)      Articles 2 and 4, points 1,  3, 4 and 5 of Article 5, and Article 31  of  Regulation  (EC) No 44/2001 shall not apply;
…’

7        Article 95(1)  of that  regulation provided:
‘The Member States shall designate in their territories as limited a number as possible of national courts and tribunals of first and second instance, hereinafter referred to as “[European Union] trade mark courts”, which shall perform the functions assigned to them by this Regulation.’

8        Article 96  of that  regulation  provided:
‘The [European Union] trade mark courts shall have exclusive jurisdiction:
(a)      for all infringement actions and — if they are permitted under national law — actions in respect of threatened infringement relating to [European Union] trade marks;
…’.

9        Article 97  of that  Regulation  stated:
‘1.      Subject to the provisions of this Regulation as well as to any provisions of Regulation (EC) No 44/2001 applicable by virtue of Article 94, proceedings in respect of the actions and claims referred to in Article 96 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment.
…
5.      Proceedings in respect of the actions and claims referred to in Article 96, with the exception of actions for a declaration of non-infringement of [a European Union] trade mark, may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened …’

10      Article 98  of Regulation  No 207/2009 provided:
‘1.      A [European Union] trade mark court whose jurisdiction is based on Article 97(1) to (4) shall have jurisdiction in respect of:
(a)      acts of infringement committed or threatened within the territory of any of the Member States;
…
2.      A [European Union] trade mark court whose jurisdiction is based on Article 97(5) shall have jurisdiction only in respect of acts committed or threatened within the territory of the Member State in which that court is situated.’

11      Article 109(1)  of  Regulation  No 207/2009 provided:
‘Where actions for infringement involving the same cause of action and between the same parties are brought in the courts of different Member States, one seized on the basis of a [European Union] trade mark and the other seized on the basis of a national trade mark:
(a)      the court other than the court first seized shall of its own motion decline jurisdiction in favour of that court where the trade marks concerned are identical and valid for identical goods or services.  The court which would be required to decline jurisdiction may stay its proceedings if the jurisdiction of the other court is contested;
(b)      the court other than the court first seized may stay its proceedings where the trade marks concerned are identical and valid for similar goods or services and where the trade marks concerned are similar and valid for identical or similar goods or services.’

12      The wording of Articles 9, 94 to 98 and 109 of  Regulation  No 207/2009 was, essentially, reproduced in Articles 9, 122 to 126 and 136 of Regulation 2017/1001.  Article 125(5) of Regulation 2017/1001 corresponds  to  Article 97(5)  of  Regulation  No 207/2009  and to  Article 93(5)  of  Regulation  No 40/94.

13      Regulation  No 44/2001, to which reference is made in  Articles 94  and 97 of  Regulation  No 207/2009, was  replaced by 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 (OJ 2012 L 351, p. 1).  Under  Article 66(1)  of the latter  regulation, it  ‘shall apply only to legal proceedings instituted, to authentic instruments formally drawn up or registered and to court settlements approved or concluded on or after 10 January 2015’.
 The dispute in the main proceedings and the question referred for a preliminary ruling

14      AMS Neve is a company established in the United Kingdom which manufactures and sells audio equipment.  BW Trustees, also established in  the United Kingdom, is the trustee of the AMS Neve executive pension scheme. Mr Crabtree is a director of AMS Neve.

15      Heritage Audio is a company established in Spain  which sells and supplies audio equipment.  Mr Rodríguez Arribas, who is domiciled  in Spain, is the sole director  of Heritage Audio.

16      On  15 October 2015 AMS Neve, BW Trustees  and  Mr Crabtree brought an action  against Heritage Audio and Mr Rodríguez Arribas before  the Intellectual Property and Enterprise Court (United Kingdom) claiming  infringement of  an EU trade mark  of which BW Trustees and  Mr Crabtree are the  proprietors  and for the use of which AMS Neve is  exclusively licensed.

17      Their  action concerns, in addition, the alleged infringement  of two marks  registered in the  United Kingdom  of which BW Trustees and Mr Crabtree  are also  the  proprietors.

18      The  EU trade mark  relied on consists of the figure 1073 and was registered  for goods  within  Class 9 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks  of 15 June 1957, as revised  and amended.  The description of the goods  covered  is in part as follows: ‘sound studio recording, mixing and processing equipment’.

19      The  defendants in the main proceedings are alleged to have offered for sale to consumers in  the United Kingdom  imitations of goods of AMS Neve  bearing a sign that is identical or similar  to that  EU trade mark  and to the national trade marks or  referring to that sign, and to have  advertised those  products.

20      The  applicants in the main proceedings  have submitted documents in  support of their  action, including the contents  of the  Heritage Audio website and the latter’s  Facebook and  Twitter  accounts, an  invoice issued by Heritage Audio to an  individual residing  in  the United Kingdom  and correspondence between Heritage Audio and a person  established  in  the United Kingdom  concerning possible deliveries  of audio equipment.

21      The  applicants in the main proceedings  have in particular submitted screenshots  from that website  on which they claim appeared offers to sell  audio equipment bearing a sign identical  or similar to that  EU trade mark. They have  stressed that  the offers for sale  are worded in English  and that a  section headed  ‘where to buy’  lists distributors established  in  various  countries,  including  the United Kingdom. Further, they claim that it is apparent from the  general sale conditions that  Heritage Audio accepts  orders from any EU  Member State.

22      The defendants in the main proceedings pleaded that  the  court before which the action was brought had no jurisdiction.

23      While the defendants do not deny  that Heritage Audio products might have been purchased, in the  United Kingdom,  through other  companies, they assert that they have not, themselves, either advertised in  the United Kingdom or made any sales  in that  Member State. They further assert  that they have never appointed a distributor for the  United Kingdom. Last, they  contend that  the content displayed  on the Heritage Audio website  and on the platforms  to which the  applicants in the main proceedings refer  was, by the time of the period covered by the infringement action, obsolete  and ought not therefore  to be taken into account.

24      By judgment of  18 October  2016, the Intellectual Property and Enterprise Court held that  it had no jurisdiction  to hear the  infringement action  in so far as that action  is based on the  EU trade mark  at issue.

25      That court states that the  applicants in the main proceedings  submitted  evidence  capable of proving that the Heritage Audio website was directed to, inter alia,  the United Kingdom. That court  considers, further, that the facts of the  dispute before it  enable it to find that  Mr Rodríguez Arribas is jointly liable for the  acts of Heritage Audio and that  the  courts  of  the United Kingdom  have jurisdiction to hear  the case in so far  as that dispute  concerns the protection of national intellectual property rights.

26      The Intellectual Property and Enterprise Court considers,  on the other hand,  that that dispute, in so far as it concerns infringement of the  EU trade mark,  is subject, in accordance with  Article 97(1)  of  Regulation  No 207/2009, to the  jurisdiction  of the courts of the Member State  in whose territory the defendant  is domiciled, in this case the Kingdom of Spain. The Intellectual Property and Enterprise Court  adds that the  jurisdiction  of the Spanish courts  also stems from  Article 97(5) of that regulation, under which  infringement actions  may also be brought  before the courts of the  Member State  in whose territory the act of infringement has been committed.

27      As regards the latter provision, the Intellectual Property and Enterprise Court considers  that the court  which has territorial jurisdiction  to hear an action brought by the  proprietor of a mark  against a third party  that has used signs identical or similar to  that  mark  in advertising and offers for sale  on a website  or on  social media platforms is the court with jurisdiction over the  place where the third party decided  to place that advertising  or to offer for sale products  on that site or  on those platforms  and took steps  to give effect to that  decision.

28      The  applicants in the main proceedings brought an appeal against that judgment before the Court of Appeal (England & Wales) (Civil Division).

29      The  referring court considers that the  court of first instance, while referring in its judgment to certain judgments of the Court, such as those of  19 April 2012, Wintersteiger (C‑523/10, EU:C:2012:220),  and of 5 June 2014, Coty Germany (C‑360/12, EU:C:2014:1318), misinterpreted those  judgments and the  case-law  of the Court  in general.

30      The  referring court  is of the opinion that  such an interpretation would lead, in essence, to a finding that  ‘the Member State  in which  the act of infringement has been committed’, within the meaning of  Article 97(5)  of  Regulation  No 207/2009, is the Member State  in which  the defendant  set up  its website and its  social media accounts. According to the referring court,  it follows, however, from the wording, purpose and  context of that provision  that the territory of the  Member State  subject to that provision is that  in which  the  consumers or  traders  to whom the advertising and  offers for sale  are directed are resident.

31      The  referring court  adds that the  Bundesgerichtshof (Federal Court of  Justice, Germany), in its ‘Parfummarken’ judgment of  9 November 2017 (I ZR  164/16), held that the  interpretation of the wording  ‘law of the country in which the act of infringement was committed’,  in  Article 8(2)  of  Regulation (EC) No 864/2007  of the European Parliament and of the Council  of  11 July 2007 on the law applicable to non-contractual obligations (Rome II) (OJ 2007 L 199, p. 40), adopted in the  judgment of  27 September 2017, Nintendo (C‑24/16 and C‑25/16, EU:C:2017:724), can be transposed  to  Article 97(5)  of  Regulation  No 207/2009.  However, the  referring court  has some doubts with regard to that finding  of  the Bundesgerichtshof.

32      In those circumstances, the Court of Appeal (England & Wales) (Civil Division) decided to stay proceedings and to refer to the Court  the following question for a preliminary ruling, adding in its decision  that  that question concerns the interpretation of  Article 97(5)  of  Regulation  No 207/2009:
‘In circumstances where an undertaking is established and domiciled in Member State A and has taken steps in that territory to advertise and offer for sale goods under a sign identical to an EU trade mark on a website targeted at traders and consumers in Member State B:
(i)      does an EU trade mark court in Member State B have jurisdiction to hear a claim for infringement of the EU trade mark in respect of the advertisement and offer for sale of the goods in that territory?
(ii)      if not, which other criteria are to be taken into account by that EU trade mark court in determining whether it has jurisdiction to hear that claim?
(iii)      in so far as the answer to (ii) requires that EU trade mark court to identify whether the undertaking has taken active steps in Member State B, which criteria are to be taken into account in determining whether the undertaking has taken such active steps?’
 Consideration of the question referred

33      By its question, the  referring court  seeks, in essence, to ascertain whether  Article 97(5) of Regulation  No 207/2009 must be interpreted as meaning that the proprietor of an  EU trade mark  who considers that his rights are infringed by the  use without his consent, by a third party, of a sign identical  to that mark  in  advertising and offers for sale displayed  electronically  in relation to products identical or similar to the goods for which that mark is  registered, may bring an  infringement action  against that third party  before an EU trade mark court of the Member State  in which  consumers  and traders  targeted by that  advertising and by those offers for sale are located, notwithstanding the fact that  the  third party  made decisions and took steps  in another Member State  to bring about that electronic display.

34      It must, first, be recalled that, notwithstanding the principle that Regulation No 44/2001 — and, as from  10 January 2015, Regulation  No 1215/2012 — applies  to court proceedings relating to an  EU trade mark, Article 94(2)  of Regulation  No 207/2009 precludes, with respect, in particular to  actions  concerning the infringement of such  a  mark, the application of certain  provisions of  Regulation  No 44/2001, such as  the application of the rules  contained in  Articles 2 and  4 and  Article 5(3)  of the latter regulation. In the light of that exclusion, the  jurisdiction of  the EU trade mark courts referred to in  Article 95(1)  of  Regulation  No 207/2009  to hear  actions claiming an infringement of an EU trade mark  follows from rules directly provided for by Regulation No 207/2009, which have the character of lex specialis in relation to the rules provided for by Regulation No 44/2001 (judgments of  5 June 2014, Coty Germany, C‑360/12, EU:C:2014:1318, paragraphs 26  and 27, and of  18 May 2017, Hummel Holding, C‑617/15, EU:C:2017:390, paragraph 26).

35      On the other hand, with respect to national trade marks, Directive 2008/95/EC  of the European Parliament and of the Council of  22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008  L 299, p. 25),  did not establish  specific rules  in relation to  jurisdiction. The same is true of Directive (EU) 2015/2436 of the European Parliament and of the Council  of  16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1), which repealed and replaced, with effect from  15 January 2019, Directive 2008/95.

36      Consequently, an  infringement action  such  as that brought by the  applicants in the main proceedings on  15 October 2015 falls, in so far as it concerns  national  trade marks, within the scope of the rules on jurisdiction  set out by  Regulation  No 1215/2012 and, in so far as it concerns an EU trade mark, within the scope of the rules on jurisdiction set out by  Regulation  No 207/2009.

37      Under  Article 97(1)  of  Regulation  No 207/2009, where the defendant  is domiciled  in a  Member State, the applicant is to bring its action before  the courts of that  Member State.

38      However, Article 97(5)  of that regulation  states that the applicant  may  ‘also’ bring its action  before the courts of the  Member State  ‘in which the act of infringement has been committed or threatened’.

39      Article 98(1)  of that  regulation  states that  where an action is brought before an  EU trade mark court on the basis of Article 97(1)  of that  regulation, it has jurisdiction  in respect of  acts of infringement committed or threatened within the territory of any of the Member States, and Article 98(2) of that regulation states that, where an action is brought before  such a court  on the basis of  Article 97(5)  of that regulation, it has jurisdiction only in respect of acts committed or threatened within the territory of the Member State in which that court is situated.

40      It follows from that distinction that the applicant, according to whether  he chooses to bring  infringement proceedings before the  EU trade mark court where the defendant is domiciled or  before the EU trade mark court of the place where  the act of infringement has been committed or  threatened, determines  the extent  of the territorial jurisdiction  of the court before which the action is brought. When the  infringement action is  based on  Article 97(1), it potentially  covers  acts of infringement committed  throughout the European Union, whereas,  when the action is based  on Article 97(5), the action is restricted  to acts of infringement committed or  threatened  within a single  Member State, namely the  Member State  where the court  before which the action is brought is situated.

41      The right conferred on the  applicant  to choose one or other  basis, arising from the use of the word ‘also’  in  Article 97(5)  of  Regulation  No 207/2009,  cannot be understood  as meaning that the  applicant  may, with reference to the same acts of infringement, simultaneously bring actions based on paragraphs  (1)  and  (5)  of Article 97, but merely reflects, as stated by the Advocate General in point 31 of his Opinion, the fact that  the forum indicated in Article 97(5) is an alternative to the  fora indicated  in the other paragraphs  of that article.

42      The EU legislature,  in providing for such an  alternative forum  and restricting, in  Article 98(2)  of Regulation No 207/2009, the  territorial jurisdiction attached  to that forum, enables the  proprietor  of the  EU trade mark  to bring, if he wishes,  targeted actions  each of which  relates to acts of infringement committed  within a single  Member State.  As the Court  has stated  previously,  where a number of  infringement actions involving the same parties concern the use of the  same sign but do not relate to the same territory, they do not have the same subject matter  and are therefore not subject to the rules on lis pendens (see, to that effect, judgment of  19 October 2017, Merck, C‑231/16, EU:C:2017:771, paragraph 42).  Accordingly, the  courts  of the various  Member States  before which actions are brought in such circumstances cannot deliver  ‘contradictory judgments’,  within the meaning of  recital 17  of  Regulation  No 207/2009, since the actions that  the applicant  has brought  relate to  distinct territories.

43      The foregoing considerations must guide the Court in responding to the concerns of the  referring court  in relation to the meaning of the wording  ‘Member State in which the act of infringement has been committed’,  in  Article 97(5)  of  Regulation  No 207/2009.

44      The Court has stated, when called on to provide an interpretation of  Article 93(5)  of  Regulation  No 40/94, that  the criterion for jurisdiction  expressed in that  wording relates to active conduct on the part of the person causing the alleged infringement (judgment of 5 June 2014, Coty Germany, C‑360/12, EU:C:2014:1318, paragraph 34).

45      The Court  concluded that, in the event of a sale and delivery of a counterfeit product in one Member State, followed by a resale by the purchaser in another Member State in which the original seller  has not himself acted, that criterion is not sufficient to establish the  jurisdiction  of the  EU trade mark court of the latter  Member State  to hear  an  infringement action  brought against the initial seller.  Such jurisdiction would be based on an effect of the  infringement  committed by  the original seller and not on the alleged unlawful  act committed  by the original seller, which would be contrary to the sense of the wording  ‘Member State in which the act of infringement has been committed’ (see, to that effect, judgment of 5 June 2014, Coty Germany, C‑360/12, EU:C:2014:1318, paragraphs 34, 37 and 38).

46      In accordance with that  case-law  and the considerations  set out in  paragraphs 40  to 42 of the present judgment, an  EU trade mark court  before which an  infringement action  on the basis of  Article 97(5)  of  Regulation  No 207/2009  is brought must, when it is called upon to review  its  jurisdiction  to give a ruling on  whether there is an infringement  in the territory  of the Member State where that court is situated, be satisfied that the acts  allegedly committed by the  defendant  were committed in that territory.

47      Where the acts allegedly committed by the  defendant  consist of  advertising and offers for sale  displayed electronically with respect to products bearing a sign  identical or similar to an  EU trade mark  without the consent of the  proprietor  of that  mark, it is necessary, as follows from  paragraph 63  of the judgment of  12 July 2011, L’Oréal and Others (C‑324/09, EU:C:2011:474), to hold that those  acts, which fall within the scope of  Article 9(2)(b) and  (d) of  Regulation  No 207/2009, 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 uses  is located  elsewhere, or  even that the products  that are the subject of such  advertising and offers for sale are located  elsewhere.

48      As is apparent from the same  paragraph  of that judgment, it must be ensured that a third party  who directs advertising and offers for sale  to  EU consumers  using a sign identical or similar to an EU trade mark  in relation to products that are identical or similar to  the goods for which that  mark  is  registered  cannot  evade  the application of  Article 9  of Regulation  No 207/2009 and thereby undermine the effectiveness of that  provision by relying on the  fact that that  advertising and those offers for sale were placed online  outside the European Union.

49      Similarly, it must be ensured that a third party who  has used a sign identical or similar to an  EU trade mark  without the consent of the  proprietor  of that  mark  in relation to products that are  identical or similar to  the goods for which that mark is registered  cannot  contest the application of  Article 97(5)  of Regulation  No 207/2009 and thereby undermine the effectiveness of that  provision  by relying on the  place where  his  advertising and those offers for sale were placed online in order to exclude the  jurisdiction  of any court other than  the court  of that place and the court  with jurisdiction over where he is established.

50      If the wording  ‘Member State in which the act of infringement has been committed’,  in  Article 97(5)  of  Regulation  No 207/2009,  were to be interpreted  as meaning that  it refers to the Member State  in the territory of which  the person  carrying out those  commercial acts  set up  his website  and activated  the display  of his advertising and offers for sale, parties  established  within the European Union committing an infringement, operating  electronically  and seeking to prevent  the  proprietors of infringed  EU marks  from resorting to an alternative forum,  would have to do no more than ensure that  the territory where the  advertising and offers for sale were placed online was the same  territory as that where  those parties are established.  In that way, Article 97(5)  of that regulation, would, in the event that  the  advertising and the offers for sale are directed to  consumers  of other  Member States, be deprived  of any scope constituting an alternative to that  of the rule on jurisdiction  laid down in  Article 97(1).

51      An interpretation of the wording  ‘Member State in which the act of infringement has been committed’  as meaning that it  refers to the place  where  the  defendant  took decisions and technical measures to activate  a display  on a website  is all the more inappropriate  given that  it may, in many cases, prove excessively difficult, or even impossible, for the  applicant  to identify that place. As opposed to situations in which  proceedings are already pending, a factor in the situation in which  the proprietor  of the  EU trade mark  finds himself  before the bringing of court proceedings  is that it is impossible to compel  the defendant  to  disclose that place, when no action has been brought before any court  at that stage.

52      In order to maintain the effectiveness  of the  EU legislature’s provision of an alternative forum, it is necessary, in accordance with the  case-law  to the effect that  the terms of a provision of EU law which makes no express reference to the law of the Member States for the purpose of determining its meaning and scope must be interpreted  having regard to the context of the provision and the objectives pursued by the legislation of which it forms part (see, inter alia, judgments of 3 September 2014, Deckmyn and  Vrijheidsfonds, C‑201/13, EU:C:2014:2132, paragraph 14, and of 18 May 2017, Hummel Holding, C‑617/15, EU:C:2017:390, paragraph 22), to give to the wording  ‘Member State in which the act of infringement has been committed’  an  interpretation  which is consistent with  the  other  provisions of  Regulation  No 207/2009 with respect to infringement.

53      One of those  provisions is, in particular, Article 9  of that regulation, which lists the  acts of infringement  which  the proprietor  of an  EU trade mark  can contest.

54      Accordingly, the expression ‘the  act of infringement’  must be understood  as relating to acts, specified in Article 9, which the applicant  claims to have been committed by the  defendant, such as, in this case, acts specified in  Article 9(2)(b) and  (d) of that article, consisting of  advertising and offers for sale  under a  sign identical to the  mark  at issue, and those  acts  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.

55      Subject to  the findings of the  referring court, the  documents available to the  Court  and the question referred  indicate that the  object of the applicants in the main proceedings, by means of the  infringement proceedings  brought  before that court, is the  advertising and offers for sale displayed by  the defendants on a website  and on social media  platforms  solely to the extent that that  advertising and those offers for sale were directed  to  consumers  and/or  traders  in  the United Kingdom.

56      Accordingly, in circumstances  such as those  at issue in the main proceedings, if it is apparent from the content  of the website  and  the platforms  at issue submitted by the  applicants in the main proceedings  that the  advertising and offers for sale which they contained  were  targeted at consumers or  traders  situated  in  the United Kingdom  and  were entirely accessible by them, which is a finding that it is for the  referring court  to make  on the basis of, inter alia, the details contained on that website  and those  platforms  with respect to the geographical areas  where the products at issue were to be delivered  (judgment of  12 July 2011, L’Oréal and Others, C‑324/09, EU:C:2011:474, paragraphs 64  and 65), those  applicants have the right to  bring, on the basis of  Article 97(5)  of  Regulation  No 207/2009, their  infringement action  before a court  of  the United Kingdom, seeking a declaration of an infringement of the  EU trade mark  in that  Member State.

57      That  interpretation  is supported by the fact that  the EU trade mark courts  of the Member State  where the  consumers  or  traders,  to whom such  advertising and offers for sale are  directed  are resident, are particularly  suited to  assessing whether the alleged infringement exists.  In  paragraphs 28  and 29 of the judgment of  19 April 2012, Wintersteiger (C‑523/10, EU:C:2012:220), the Court  took account of that  factor of proximity, interpreting  the wording  ‘the place where the harmful event occurred’,  in  Article 5(3)  of  Regulation  No 44/2001,  as meaning that  the proprietor  of a national  mark  may  bring an infringement action  before the  courts  of the Member State  in which  the national mark  is  registered, since those  courts  are, having regard to  the criteria  for assessing infringement  established  in the  judgments of  23 March 2010, Google France  and Google (C‑236/08 to C‑238/08, EU:C:2010:159),  and  of 12 July 2011, L’Oréal and Others (C‑324/09, EU:C:2011:474), best able to assess  whether the  mark has been infringed.  The courts of the place where the harmful event occurred are  particularly  suited to giving a ruling  by reason of proximity  and  ease of taking evidence (judgment of  17 October 2017, Bolagsupplysningen and  Ilsjan, C‑194/16, EU:C:2017:766, paragraph 27  and the  case‑law cited).

58      The interpretation of Article 97(5)  of  Regulation  No 207/2009, as  lex specialis with respect to actions alleging  infringement of EU  marks, must, it is true,  be independent of the  interpretation of  Article 5(3)  of Regulation  No 44/2001  adopted by the Court  with respect to actions alleging  infringement of national marks (judgment of  5 June 2014, Coty Germany, C‑360/12, EU:C:2014:1318, paragraph 31). Nonetheless,  the interpretations  of the concepts of  ‘Member State in which the act of infringement has been committed’  and  ‘the place where the harmful event occurred’,  in those  provisions,  must have a degree of consistency  in order, in accordance with  the objective  laid down in recital 17  of  Regulation  No 207/2009,  to reduce as far as possible  cases of  lis pendens as a result  of the bringing of  actions, in different  Member States,  involving the same parties and the same territory, one brought on the basis  of an  EU trade mark  and another  on the basis of  parallel national trade marks (see, to that effect, judgment of  19 October 2017, Merck, C‑231/16, EU:C:2017:771, paragraphs 30  to 32).

59      If the rule of  jurisdiction  laid down in  Article 97(5)  of  Regulation  No 207/2009  were to be interpreted  as meaning that  that  provision  did not, unlike  Article 5(3)  of  Regulation  No 44/2001, permit the  proprietors  of EU  marks  to bring an infringement action  before the courts  of the Member State  within which  they seek a declaration of an infringement, the consequence would be that those  proprietors would bring proceedings  alleging infringement of an  EU trade mark  and proceedings alleging infringement of  parallel national trade marks before courts of  different  Member States. Frequent application of the mechanism provided in  Article 109  of  Regulation  No 207/2009  to  resolve  cases of  lis pendens would, because of such a divergent approach in  Article 97(5)  of  Regulation  No 207/2009 (now  Article 125(5)  of  Regulation 2017/1001)  and  Article 5(3) of Regulation  No 44/2001 (now  Article 7(2)  of  Regulation  No 1215/2012),  be likely,  thereby  defeating the objective,  pursued by  those  regulations,  of reducing cases  of  lis pendens.

60      It must, last,  be observed  that the  interpretation  adopted  in the present judgment is not  invalidated  by the interpretation  deriving from  the judgment of  27 September 2017, Nintendo (C‑24/16 and C‑25/16, EU:C:2017:724), to which  the referring court  made reference  against the background summarised in  paragraph 31  of the present judgment.

61      In  paragraphs 108  and 111 of the judgment of  27 September 2017, Nintendo (C‑24/16 and  C‑25/16, EU:C:2017:724), the Court interpreted  the wording  ‘country in which the act of infringement [of the intellectual property right at issue] was committed’, in  Regulation  No 864/2007, as referring to the  law  of the  country  where the initial  act of infringement, at the origin of the  allegedly wrongful conduct, was committed or may have been committed, that initial act, in the context of  electronic commerce, being the act of  activating the  process of placing  online the offer for sale.

62      However, the purpose and  object of  the wording of Article 8(2)  of  Regulation  No 864/2007 are  fundamentally different from  that  of  Article 97(5)  of  Regulation  No 207/2009  and  Article 5(3)  of  Regulation  No 44/2001.

63      Article 97(5)  of  Regulation  No 207/2009 provides an alternative  forum of  jurisdiction  and is intended, as stated  in paragraph 42  of the present judgment, to enable the  proprietor  of an  EU trade mark  to bring one or more actions,  each relating specifically to  the acts of infringement committed  within a single  Member State. In contrast, Article 8(2)  of  Regulation  No 864/2007 does not concern  the determination of which court has  jurisdiction, but relates to  the question of how, in the case of a non-contractual obligation arising from an infringement of a unitary intellectual property right, the law applicable to any question that is not governed by the relevant EU instrument is to be  determined (see, to that effect, judgment of  27 September 2017, Nintendo, C‑24/16 and C‑25/16, EU:C:2017:724, paragraph 91).

64      That determination of the applicable law  may become necessary  when an  infringement action, brought before a  court that has  jurisdiction to give rulings  on acts of infringement committed  within any  Member State, relates to  various  acts of infringement, committed  in different  Member States. In such circumstances, in order to ensure that  a court does not have to  apply  more than one law, one alone of those acts  of  infringement, namely the initial  act of infringement, must be identified  as determinative of the  law applicable to the proceedings (judgment of  27 September 2017, Nintendo, C‑24/16 and C‑25/16, EU:C:2017:724, paragraphs 103  and 104). The need to ensure  that only one law  is applicable  does not exist  in the context of rules concerning which court has  jurisdiction, such as those contained in  Regulation  No 44/2001  and  in Regulation  No 207/2009, which provide for more than one  forum.

65      In the light of all the foregoing, the answer to the question referred is that  Article 97(5)  of  Regulation  No 207/2009 must be interpreted as meaning that the  proprietor  of an  EU trade mark,  who considers that his rights have been infringed  by the use  without his consent, by a third party, of a sign identical to that  mark  in  advertising and offers for sale  displayed electronically  in relation to products that are identical or similar to the goods  for which that  mark  is  registered, may bring  an  infringement action  against that third party  before an  EU trade mark court of the Member State  within which  the consumers or  traders  to whom  that advertising and those offers for sale are directed are located, notwithstanding that  that third party  took decisions and  steps  in another Member State  to bring about that  electronic display.
 Costs

66      Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court.  Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.
On those grounds, the Court (Fifth Chamber) hereby rules:

Article 97(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark must be interpreted as meaning that the proprietor of a European Union trade mark who considers that his rights have been infringed by the use without his consent, by a third party, of a sign identical to that mark in advertising and offers for sale displayed electronically in relation to products that are identical or similar to the goods for which that mark is registered, may bring an infringement action against that third party before a European Union trade mark court of the Member State within which the consumers or traders to whom that advertising and those offers for sale are directed are located, notwithstanding that that third party took decisions and steps in another Member State to bring about that electronic display.

Regan

Lycourgos

Juhász

Ilešič
 
Jarukaitis

Delivered in open court in Luxembourg on 5 September 2019.

A. Calot Escobar
 
E. Regan

Registrar
 
President of the Fifth Chamber

*      Language of the case: English.