AMS Neve Ltd and Others v Heritage Audio SL and Pedro Rodríguez Arribas.
Date: 2019-09-05
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).
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.
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).
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.
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).
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.