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Wednesday, 29 December 2010

Trade marks, AdWords and the location of harmful events: some brain-teasers

Without the facts, the IPKat isn't even sure
if this is the right Wintersteiger
Now here's a good IP question or two for the Court of Justice of the European Union -- it's coming up in Case C-523/10 Wintersteiger [courtesy of the UK Intellectual Property Office, hereand the questions run like this:
"1. In the case of an alleged infringement by a person established in another Member State of a trade mark granted in the State of the court seized through the use of a keyword (AdWord) identical to that trade mark in an internet search engine which offers its services under various country-specific top-level domains, is the phrase "the place where the harmful event occurred or may occur" in Article 5(3) of Regulation 44/2001 ("Brussels I") is to be interpreted as meaning that;

1.1. jurisdiction is established only if the keyword is used on the search engine website the opt-level domain of which is that of the State of the court seized;

1.2. jurisdiction is established only if the search engine website on which the keyword is used can be accessed in the State of the court seized;

1.3. jurisdiction is dependent on the satisfaction or other requirements additional to the accessibility of the website?

2. If Question1.3 is answered in the affirmative: Which criteria are to be used to determine whether jurisdiction under Article 5(3) of Brussels I is established where a trade mark granted in the State of the course seized is used as an AdWord on a search engine website with a country-specific top-level domain different from that of the State of the court seized?"
The IPKat is surprised only that it has taken so long for these issues to reach Europe's highest court, given the high level of internet (and AdWord) use within a single market in which there are so many countries and jurisdictions.

If you would like to advise the UK Intellectual Property Office on these issues, thus enabling the UK government to decide whether to get involved or not, you can email your thoughts here.  As usual, the time for response is absurdly short, and is really an insult to the intellectual property community: you have to submit your comments by Tuesday 4 January 2011 -- and there aren't exactly many working days between now and then.   The deadline for the court to receive observations is 1 March 2011.

Merpel says, can any reader tell her what the underlying dispute is all about?

1 comment:

Aurelio Lopez-Tarruella Martinez said...

In order to apply Art 5 (3) it has to be shown that the alleged infringer was directing his activities towards the Member States of the court seized. Only if that is shown, it is possible to affirm that there is a close link between the facts of the case and the court that justifies the jurisdiction of that court and does not put in danger the defendant’s right to a due process.

The simple accessibility of the website for the state of the court seized is not enough to show that close link (although the French Cour de cassation has admitted so in at least two judgements including the “Castellblanch” case). Other requirements are needed to show that the alleged infringer was directing his activities to the state of the court seized.

The criteria in 1.1 and in 1.2 can be used to determine whether the alleged infringer is directing his activities to the state of the court seized. But, these criteria cannot by themselves justify a close link. Therefore, other criteria are needed. In this sense, reference to the recent ECJ Judgement “Pammer” (C-585/08) is very useful. It concerns jurisdiction on consumer contracts concluded in the Internet, where the determination of whether the professional is directing his activities to the consumer’s State of residence is also needed.

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