Coty Germany GmbH v First Note Perfumes NV.
Date: 2014-06-05
26. In that regard, it should be noted that, notwithstanding the principle that Regulation No 44/2001 applies to court proceedings relating to a Community trade mark, the application of certain provisions of that regulation to proceedings in respect of the actions and claims referred to in Article 92 of Regulation No 40/94 is precluded under Article 90(2) of that regulation.
27. In the light of that exclusion, the jurisdiction of the Community trade mark courts provided for in Article 91(1) of Regulation No 40/94 to decide actions and claims referred to in Article 92 of that regulation results from rules directly provided for by that regulation, which, as was stated by the Advocate General in point 36 of his Opinion, have the character of lex specialis in relation to the rules provided for by Regulation No 44/2001.
31. With regard to the interpretation of Article 93(5), in the light of the findings in paragraphs 27 and 28 above, the concept of ‘the Member State in which the act of infringement has been committed or threatened’, referred to in that provision, must be interpreted independently of the concept of ‘the place where the harmful event occurred or may occur’ referred to in Article 5(3) of Regulation No 44/2001.
32. Consequently, the duality of linking factors, namely the place of the event giving rise to the damage and that where the damage occurred, accepted by the Court’s case-law relating to Article 5(3) of Regulation No 44/2001 (see Case 21/76 Bier , EU:C:1976:166, paragraph 19, and, most recently, Case C‑45/13 Kainz , EU:C:2014:7, paragraph 23 and the case-law cited), cannot automatically apply to the interpretation of the concept of ‘the Member State in which the act of infringement has been committed or threatened’ in Article 93(5) of Regulation No 40/94.
34. With regard to the wording of Article 93(5) of Regulation No 40/94, the concept of ‘the Member State in which the act of infringement has been committed’ implies, as the Advocate General stated in point 31 of his Opinion, that that linking factor relates to active conduct on the part of the person causing that infringement. Therefore, the linking factor provided for by that provision refers to the Member State where the act giving rise to the alleged infringement occurred or may occur, not the Member State where that infringement produces its effects.
37. Consequently, jurisdiction under Article 93(5) of Regulation No 40/94 may be established solely in favour of Community trade mark courts in the Member State in which the defendant committed the alleged unlawful act.
38. In the light of the foregoing, the answer to Question 1 is that the concept of the ‘Member State in which the act of infringement has been committed’ in Article 93(5) of Regulation No 40/94 must be interpreted as meaning 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, that provision does not allow jurisdiction to be established to hear an infringement action against the original seller who did not himself act in the Member State where the court seised is situated.
Question 2
43. With regard to the interpretation of Article 5(3) of Regulation No 44/2001, it should be recalled at the outset that the provisions of that regulation must be interpreted independently, by reference to its scheme and purpose (Case C‑228/11 Melzer  EU:C:2013:305, paragraph 22 and the case-law cited).
44. It is only by way of derogation from the fundamental principle laid down in Article 2(1) of Regulation No 44/2001, attributing jurisdiction to the courts of the Member States in which the defendant is domiciled, that Section 2 of Chapter II makes provision for certain special jurisdictional rules, such as that laid down in Article 5(3) of that regulation ( Melzer  EU:C:2013:305, paragraph 23).
45. In so far as the jurisdiction of the court of the place where the harmful event occurred or may occur constitutes a rule of special jurisdiction, it must be interpreted restrictively and cannot give rise to an interpretation going beyond the cases expressly envisaged by that regulation ( Melzer  EU:C:2013:305, paragraph 24).
46. The fact remains that the expression ‘place where the harmful event occurred or may occur’ in Article 5(3) of Regulation No 44/2001 is intended to cover both the place where the damage occurred and the place of the event giving rise to it, so that the defendant may be sued, at the option of the applicant, in the courts for either of those places ( Melzer  EU:C:2013:305, paragraph 25).
47. In that connection, according to settled case-law, the rule of special jurisdiction laid down in Article 5(3) of Regulation No 44/2001 is based on the existence of a particularly close linking factor between the dispute and the courts of the place where the harmful event occurred or may occur, which justifies the attribution of jurisdiction to those courts for reasons relating to the sound administration of justice and the efficacious conduct of proceedings ( Melzer  EU:C:2013:305, paragraph 26).
48. Since the identification of one of the linking factors recognised by the case‑law set out in paragraph 46 above enables the court objectively best placed to determine whether the elements establishing the liability of the person sued are present to take jurisdiction, it follows that only the court in the jurisdiction of which the relevant linking factor is situated may validly be seised (see, to that effect, Case C‑133/11 Folien Fischer and Fofitec  EU:C:2012:664, paragraph 52, and Melzer  EU:C:2013:305, paragraph 28).
50. As the Court has already held, in circumstances in which only one among several presumed perpetrators of the alleged harmful act is sued before a court within whose jurisdiction he has not acted, the event giving rise to the damage may not be regarded as taking place within the jurisdiction of that court for the purpose of Article 5(3) of Regulation No 44/2001 (see Melzer  EU:C:2013:305, paragraph 40).
51. Accordingly, Article 5(3) of that regulation does not allow jurisdiction to be established, on the basis of the place of the event giving rise to the damage, to hear an action for damages based on the law on combating unfair competition of the Member State in which the court seised is situated against one of the presumed perpetrators of that damage who has not acted within the jurisdiction of the court seised (see Melzer  EU:C:2013:305, paragraph 41).
54. It is settled case-law that the place where the damage occurred is the place where the event which may give rise to liability in tort, delict or quasi-delict resulted in damage (see Case C‑189/08 Zuid-Chemie  EU:C:2009:475, paragraph 26).
55. With regard to damage resulting from infringements of an intellectual and commercial property right, the Court has stated that the occurrence of damage in a particular Member State is subject to the protection, in that State, of the right in respect of which infringement is alleged (see Case C‑523/10 Wintersteiger  EU:C:2012:220, paragraph 25, and C‑170/12 Pinckney , EU:C:2013:635, paragraph 33).
57. It must therefore be held that, in circumstances such as those of the main proceedings, an action relating to an infringement of that law may be brought before the German courts, to the extent that the act committed in another Member State caused or may cause damage within the jurisdiction of the court seised.
58. In that regard, it is for the court seised to assess, in the light of the evidence at its disposal, the extent to which the sale of the ‘Blue Safe for Women’ perfume to Stefan P., which occurred in Belgium, was capable of infringing provisions of the German law against unfair competition and, thereby, of causing damage within the jurisdiction of that court.