The Advocate General has issued an opinion in Case C-172/18 AMS Neve Ltd and others v Heritage Audio SL and another on the interpretation of Article 97(5) of Regulation EC/207/2009, following a reference from the English Court of Appeal. 

The Court of Appeal referred the case to the Court of Justice of the European Union in the context of a trade mark infringement case involving the infringement of an EU trade mark registration owned or licensed by the various UK claimants, by a Spanish company whose website, it was claimed, targeted customers in the UK. 

The Advocate General considered that, in circumstances where an undertaking which is established and domiciled in one member state has taken steps in that territory to advertise and offer for sale goods under a sign identical to an EU trade mark on a website targeted at traders and consumers in another member state, an EU trade mark court in the other member state has jurisdiction to hear an action for infringement of the EU trade mark about the advertisement and offer for sale of goods in that member state.

The following questions were referred:

In circumstances where an undertaking is established and domiciled in Member State A and has taken steps in that territory to advertise and offer for sale goods under a sign identical to an EU trade mark on a website targeted at traders and consumers in Member State B:

• does an EU trade mark court in Member State B have jurisdiction to hear a claim for infringement of the EU trade mark in respect of the advertisement and offer for sale of the goods in that territory?
• if not, which other criteria are to be taken into account by that EU trade mark court in determining whether it has jurisdiction to hear that claim?
• in so far as the answer to the [second point above] requires that EU trade mark court to identify whether the undertaking has taken active steps in Member State B, which criteria are to be taken into account in determining whether the undertaking has taken such active steps?

The AG said that the place from which people may gain access to a website is not an adequate criterion to decide the jurisdiction of the courts of that member state.

He concluded this based on some public policy considerations. One of these was the risk that otherwise there would be a significant rise in the number of forums with jurisdiction for infringement of EU trade marks. This could result in forum shopping or trade mark bullying.

The AG said that Article 97(5) confers jurisdiction on the courts in the member state in which the defendant committed the alleged unlawful act, as long as that act (eg advertisement or offer) is targeted at consumers located in the territory of that member state.

He also considered the criteria that indicate that a website is “targeted” at consumers in a particular member state. These include, among others, the language of the website, the fact that an offer and an advertisement refer expressly to the public of a member state, that they are available on a website with a country-specific top-level domain of that member state, that the prices are set out in the national currency or that telephone numbers contain the national code of the country concerned. Language is not necessarily significant.

In conclusion, the AG said that the CJEU should answer the referred questions as follows: Article 97(5) must be interpreted as meaning that, in circumstances where an undertaking which is established and domiciled in member state A has taken steps in that territory to advertise and offer for sale goods under a sign identical to an EU trade mark on a website targeted at traders and consumers in member state B, an EU trade mark court in Member State B has jurisdiction to hear an action for infringement of the EU trade mark in respect of the advertisement and offer for sale of goods in that territory.

It was for the Court of Appeal to rule on that matter when deciding the jurisdiction of the courts of the member state concerned under Article 97(5).