[Editor's note] Like most countries and regions in the world, The rulings of the Court of Justice of the European Union have important guiding significance and predictive value for understanding the legal norms of the European Union. Esabaril (ELZABURU) At the beginning of each year, typical cases of the Court of Justice of the European Union in the previous year are summarized and published, And a brief review of each case, In order to help customers and partners to understand the EU intellectual property norms. Given the importance of Chinese customers and partners, We try to publish the Chinese version of typical cases on a weekly basis, It is convenient for Chinese partners to learn the latest information in a timely manner.

　　 [background]

　　BW Trustees and Mr. Mark Crabtree Joint ownership of graphic trademarks "1073" In the European Union and several countries registered trademark rights, Specify use in the No 9 Class goods "Studio recording, Mixing and processing equipment" on. AMS Neve Is a British company selling audio equipment in the United Kingdom, It is also the exclusive licensee of the trademark in question.

　　The trademark owner and the exclusive licensee shall apply to the European Union Trademark Court designated by the United Kingdom (UK intellectual property Entity Court) File a trademark infringement suit, Sue Heritage Audio (A company in Spain) And the Spanish Mr. Rodríguez Arribas Offering to sell goods bearing the disputed trademark in the UK infringes the plaintiff's EU trademark rights and UK national trademark rights.

　　The English court held that, Because this case is based on the European Union trademark rights, Therefore according to "Eu trade mark regulation (The first 207/2009 No) " The first 97. 1 article (Existing ordinance 125. 1 article) , The English courts have no jurisdiction over the dispute, By the court where the defendant is domiciled (The Spanish courts) jurisdiction. In addition, This is despite the fact that both the website and the advertising campaign in question are aimed at the UK market, But the decision to place controversial ads online promising to sell infringing goods was made in Spain, Therefore, In accordance with the "Eu trade mark regulation (The first 207/2009 No) " The first 97. 5 article (Existing ordinance 125. 5 article) ——The court of the member State where the infringement occurred has jurisdiction, It should also be under the jurisdiction of the Spanish courts.

　　Court of appeal (Civil courts of England and Wales) Upon receipt of the petition, Ask the European Court of Justice for a preliminary ruling, clarify "Eu trade mark regulation (The first 207/2009 No) " The first 97. 5 article (Existing ordinance 125. 5 article) prescribed "The court of the member State where the infringement occurred has jurisdiction" Specifically refers to, Where the defendant set up the disputed website and social media accounts (Spain in this case) , It is also the location of the consumers and traders directly targeted by the controversial advertisements and offers to sell the disputed goods (In this case, the U. K) ?

　　 [conclusion]

　　The European Court of Justice chose the second interpretation, The reason is that: " "Eu trade mark regulation (The first 207/2009 No) " The first 97. 5 Article shall be understood as, Without permission, Third parties advertise and promise to sell through online advertising, Goods bearing a registered EU trademark identical or similar to that specified in the registered trademark, Infringing upon the rights of a registered trademark, The right holder has the right to bring an action to the trademark court of the European Union in the member state where the target consumers and traders are located for such infringement as advertising and offering, It does not take into account where the third party's decision to commit the infringement was made, Or the place where measures are taken to achieve online advertising and promised sales, Actually located in the domain of other member States" .

　　 [comment]

　　The ruling clarifies the principle of jurisdiction interpretation of the Trademark Court of the European Union designated by the member States to accept the trademark disputes of the European Union (current "Eu trade mark regulation (The first 2017/1001 No) " The first 123 Bar sum 124 article) .

　　First of all, The same case involves infringement of the trademark right of the EU and the trademark right of a member State, The EU Trademark Court of the member State has jurisdiction.

　　secondly, The place where the infringement occurred (current "Eu trade mark regulation (The first 2017/1001 No) " The first 125. 5 article) , And the trademark Court of the European Union of the Member state in which the defendant is domiciled also has jurisdiction, If the infringement occurred in a different member state from the domicile of the defendant, The plaintiff has the right to initiate an action in the Trademark Court of the European Union in any of the above-mentioned Member States.

　　Pass the case, The court also spelled out the different implications of the various options: Select the EU Trademark Court in the Member State where the defendant is domiciled, The Court of Admissibility has jurisdiction over infringements committed or threatened by the defendant in all Member States of the European Union; Instead, the Trademark Court of the European Union in the member state where the infringement is committed, The court of Admissibility can only have jurisdiction over infringements committed by the defendant in the territory of that Member State.

　　Based on the above analysis, consider "Eu trade mark regulation (The first 2017/1001 No) " The first 125. 5 As stipulated in the article "Other options are available (alternative forum) " Concept of, The ruling states that, Because it's an alternative, Therefore, the plaintiff's right to choose cannot be deprived because of the wrong understanding of the law. If the place of infringement is interpreted as the defendant's decision, And the place where technical and organizational measures are implemented for its website or for the realization of online advertising and promised sales, Then the defendant only has to make sure that the place where the decision was made is his domicile, Or even outside the European Union, Can easily prevent the trademark owner from exercising that option.

　　In other words, In determining the court of jurisdiction, Objective rules should apply (For example "Eu trade mark regulation (The first 2017/1001 No) " The first 125 article 1 To control 4 Provision of paragraph) , But under no circumstances shall the plaintiff be deprived of the option of jurisdiction. Therefore, The European Court of Justice made that clear in its decision in this case, To ensure "Eu trade mark regulation (The first 2017/1001 No) " The first 125. 5 prescribed "Other options are available" Effective execution, "The place where the infringement occurred" Should be understood as, Including disputed advertising campaigns and promised sales to the territory, Commercial content is displayed on websites or social media, And can be effectively accessed by consumers and traders targeted and directed.

　　compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights