Wintersteiger AG v Products 4U Sondermaschinenbau GmbH.
Date: 2012-04-19
18. In that regard, it must be noted at the outset that the rule of special jurisdiction laid down, by way of derogation from the principle of jurisdiction of the courts of the place of domicile of the defendant, in Article 5(3) of the regulation is based on the existence of a particularly close connecting factor between the dispute and the courts of the place where the harmful event occurred, which justifies the attribution of jurisdiction to those courts for reasons relating to the sound administration of justice and the efficacious conduct of proceedings (Joined Cases C‑509/09 and C‑161/10 eDate Advertising and Others  [2011] ECR I‑10269, paragraph 40).
19. It should also be noted 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 ( eDate Advertising and Others , paragraph 41 and the case‑law cited).
20. Those two places could constitute a significant connecting factor from the point of view of jurisdiction, since each of them could, depending on the circumstances, be particularly helpful in relation to the evidence and the conduct of the proceedings ( eDate Advertising and Others , paragraph 41 and the case‑law cited).
The place where the damage occurred
21. As regards, first, the place where the damage occurred, the Court has already held that it is the place where the event which may give rise to liability in tort, delict or quasi-delict resulted in damage (Case C‑189/08 Zuid-Chemie  [2009] ECR I‑6917, paragraph 26).
22. In the context of the internet, the Court has also held that, in the event of an alleged infringement of personality rights, the person who considers that his rights have been infringed by means of content placed online on a website has the option of bringing an action for liability, in respect of all the damage caused, before the courts of the Member State in which the centre of his interests is based (see eDate Advertising and Others , paragraph 52).
23. As the Court noted on that occasion, the criterion of centre of interests of the person whose rights have been infringed is in accordance with the objective of foreseeability of jurisdiction in so far as it enables the applicant to identify easily the court in which he may sue and the defendant reasonably to foresee before which court he may be sued ( eDate Advertising and Others , paragraph 50).
24. However, as the Advocate General pointed out at paragraph 20 of his Opinion, that assessment, made in the particular context of infringements of personality rights, does not apply also to the determination of jurisdiction in respect of infringements of intellectual property rights, such as those alleged in the main proceedings.
25. Contrary to the situation of a person who considers that there has been an infringement of his personality rights, which are protected in all Member States, 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.
26. Nevertheless, the question whether the use, for advertising, of a sign identical to a national mark on a website operating solely under a country-specific top-level domain different from that of the Member State in which the trade mark is registered in fact infringes that mark falls within the scope of the examination of the substance of the action that the court having jurisdiction will undertake in light of the applicable substantive law.
27. With regard to jurisdiction to hear a claim of infringement of a national mark in a situation such as that in the main proceedings, it must be considered that both the objective of foreseeability and that of sound administration of justice militate in favour of conferring jurisdiction, in respect of the damage occurred, on the courts of the Member State in which the right at issue is protected.
28. It is the courts of the Member State in which the trade mark at issue is registered which are best able to assess, taking account of the interpretation of Directive 2008/95 in, inter alia, Joined Cases C‑236/08 to C‑238/08 Google France and Google  [2010] ECR I‑2417, and Case C‑324/09 L’Oréal and Others [2011] ECR I‑6011, whether a situation such as that in the main proceedings actually infringes the protected national mark. Those courts have the power to determine all the damage allegedly caused to the proprietor of the protected right because of an infringement of it and to hear an application seeking cessation of all infringements of that right.
31. It is settled case‑law that the provisions of Regulation No 44/2001 must be interpreted independently, by reference to its scheme and purpose ( eDate Advertising and Others , paragraph 38 and the case‑law cited), which include the foreseeability of conferring jurisdiction, ensuring sound administration of justice and efficacious conduct of proceedings.
34. In the case of an alleged infringement of a national trade mark registered in a Member State because of the display, on the search engine website, of an advertisement using a keyword identical to that trade mark, 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 which should be considered to be the event giving rise to an alleged infringement, and not the display of the advertisement itself.
35. As the Court has already held in the context of interpretation of the directive to approximate the laws of the Member States relating to trade marks, it is the advertiser choosing a keyword identical to the trade mark, and not the provider of the referencing service, who uses it in the course of trade ( Google France and Google , paragraphs 52 and 58). The event giving rise to a possible infringement of trade mark law therefore lies in the actions of the advertiser using the referencing service for its own commercial communications.
36. It is true that the technical display process by the advertiser is activated, ultimately, on a server belonging to the operator of the search engine used by the advertiser. However, in view of the objective of foreseeability, which the rules on jurisdiction must pursue, the place of establishment of that server cannot, by reason of its uncertain location, be considered to be the place where the event giving rise to the damage occurred for the purpose of the application of Article 5(3) of Regulation No 44/2001.