1. The German Federal Court of Justice was charged with answering the question whether German courts have international jurisdiction in proceedings against a company based in Italy charged with infringing an EU trademark. The Italian defendant dealt in perfumes and cosmetic products and had a website that was available in German, as well. Although the website did not allow for ordering products directly, it provided contact information. When a company based in Germany contacted the Italian defendant by email, the defendant emailed back inventory and price information about the requested products. The German company then ordered several perfumery products, which were the plaintiff’s non-exhausted original products because they had been placed on the market within the European Union without the plaintiff’s consent (cf. Art. 15 CTR or Art. 15 CDR respectively).
2. The appellate court confirmed its international jurisdiction pursuant to Art. 125 para. 5 CTR by arguing that the inventory and pricing information emailed by the defendant constituted a request to make an offer and that the defendant thus actively attempted to conclude a contract in Germany (cf. judgment by the German Federal Court of Justice, para. 18).
3. The German Federal Court of Justice rejected this interpretation of Art. 125 para. 5 CTR, according to which the international jurisdiction of German courts for defendants based abroad is affirmed with the argument that at least one of several infringing acts were committed domestically (cf. para. 24 et seq.).
The German Federal Court of Justice explained that a decision on the international jurisdiction of German courts in principle depends on the fact whether the plaintiff alleged an infringing act committed domestically by the defendant within the meaning of Article 125 para. 5 CTR and whether this act cannot be ruled out from the start (cf. para. 26).
The wording of Art. 125 para. 5 CTR “[place] in which the act of infringement has been committed or threatened”, however, focuses on an act committed by the infringer and therefore pertains to the member state in which the incident that the alleged infringement is based on, occurred or is threatening to occur, and not the member state in which the infringement takes effect (cf. para. 27).
4. The German Federal Court of Justice, as well as the appellate court, did not consider the defendant’s German website as such as sufficient to establish an infringing act within the meaning of Art. 125 para. 5 CTR in Germany. The appellate court justified its opinion by stating that defendant’s German website does not offer the option to place an order. The German Federal Court of Justice holds, on the other hand, that even if it were possible to place an online order, this still would not give German courts international jurisdiction (cf. para. 30). The German Federal Court of Justice bases this opinion primarily on the assessments of the ECJ made in the judgment “Nintendo/BigBen” (GRUR 2017, 1120 et seq.), on which we reported in detail in the Preu Bohlig Newsletter of December 2017 (p. 4 et seq.).
The German Federal Court of Justice states that the ECJ judgment did, in fact, rule in favour of the CDR, but the ECJ decision could easily be applied to trademark law due to the similarity between the applicable provisions of the CDR and the CTR (cf. para. 30).
5. The German Federal Court of Justice states that the comments by the ECJ about the interpretation of the provision of Art. 8 para. 2 of the Rome II Regulation governing non-contractual obligations, which includes wording that is similar to that of Art. 125 para. 5 CTR applies accordingly (para. 34). It holds that in the event of intellectual property right infringements, the same defendants are frequently accused of several infringing acts, which means that an event giving rise to damage occurs in several places. When identifying the event giving rise to damage in these cases, the defendant’s entire conduct should be considered instead of every individual infringing act to determine the place where the original infringing act was or is threatening to be committed (cf. para. 34).
6. The place of the event giving rise to damage pursuant to Art. 125 para. 5 CTR is, in this specific case, not the place from where the website can be accessed (Germany). Rather, it is the place where the process of the publication of the offer was set in motion by the economic participant on its website (Italy). Even if the website of the Italian defendant must be considered an offering of goods, it would have to be assumed in the event of a dispute that the process of the publication of the offer took place in Italy and not in Germany (cf. para. 31).
The German Federal Court of Justice does not consider the emailing of product and price lists to the recipient in Germany an event giving rise to damage within the meaning of Art. 125 para. 5 CTR, because in this case, the event giving rise to damage is the place from where the email was sent, i.e. Italy, and not the place where it was received (cf. para. 38).
7. The German Federal Court of Justice did not have to discuss the question whether, in the event the non-exhausted goods were sent by the Italian defendant to Germany, an overall assessment of its conduct would have given jurisdiction to German courts because in the case before the court, the German company had arranged for picking up the goods through a shipping company. That meant that the defendant did not deliver directly to Germany. A different decision is hard to imagine, because in this case, the place of the event giving rise to damage again is the place that initiated the shipment of the goods (Italy) and not the place where the goods were received (Germany).
8. The decision by the German Federal Court of Justice has a direct effect on action taken by a court against an infringer with business seat in a member state of the European Union on the basis of an EU trademark or a community design. If the infringer, however, is neither based nor has an office in a member state of the European Union, the infringer may be sued at the plaintiff’s seat (cf. Art. 125 para. 2 CTR or Art. 82 para. 2 CDR, respectively).
For German trademarks as well as German designs, there is no prior-ranking rule of jurisdiction that corresponds to Art. 125 para. 5 CTR or Art. 82 para. 5 CDR, respectively. The question of international jurisdiction is governed by Art. 7 no. 2 Brussels Ia Regulation when national trademarks and national designs are infringed upon by a company with business seat abroad. Accordingly, German courts have special jurisdiction even if the event giving rise to damage occurred or is threatening to occur domestically. The wording “place where the act of infringement has been committed or threatened” refers here, contrary to the wording used in the CTR and the CDR, to both the place where the success of the damage is realized and the place of the events that are causal for the damage, so that a defendant with business seat abroad may be sued before a court of either of these two places at the plaintiff’s discretion (cf. ECJ GRUR 2011, 806 margin no. 44 et seqq. – Coty/First Note Perfumes).
The decision by the German Federal Court of Justice therefore means that one and the same conduct of an infringer with business seat in another European country gives German courts international jurisdiction in one case and not in another, depending on whether German property rights were infringed upon or whether the matter involves an EU-wide property right. Since, in practice, knock-offs are often imported to Germany from other European countries, the question is now whether it is advisable to increasingly register German property rights in order to secure German court jurisdiction and to avoid potentially lengthy and expensive proceedings in other European countries.
