Amplifier decision by EU clarifies trade mark jurisdiction

Known widely through the music industry, the 1073 amplifier has been produced by AMS-Neve for 40 years.

Throughout that time, AMS has used Intellectual Property to protect its design and product.

Unsurprisingly, they were not happy to find out that a copy of their product, also named the ‘1073’ was being produced and sold by a Spanish company. Heritage Audio. After the discovery was made, proceedings were commenced for infringement of both an EU trade mark and two UK trade marks. This was coupled with a claim for passing off.

These proceedings were commenced in the UK, so Heritage Audio argued that the UK courts do not have the jurisdiction to make a judgment on all the elements of this case.

To clarify this issue, a preliminary ruling was made to the Court of Justice for the European Union to determine whether the UK court could rule on all three aspects of AMS’s claim.

HHJ Hacon considered this case, and clearly stated that in respect of the UK trade mark and passing off claims, it was clear that the UK was clearly within the right jurisdiction. However, the claim in relation to the EU trade mark was the point under consideration.

EU laws state that jurisdiction in a foreign court is not determined by where the harm had occurred but where the infringing act had been committed or threatened. As Hacon highlighted, in the current case, as Heritage Audio was based in Spain where their goods were sold, this would be the jurisdiction where the infringing act had been committed.

Therefore, the UK court could not make judgment on this issue.

In conclusion of this case, AMS-Neve would have to issue a claim in the UK for the infringement of their UK trade mark and the passing off but would have to issue the claim for infringement of their EU trade mark in Spain as this was where the infringing act had taken place.

Keep your eyes peeled for the full trials considering the actual potential of infringement.

If you’d like to know more about this article please send an email to Ellis Sweetenham quoting the article title and any questions you might have, alternatively call the office number on 02380 235 979 or send an enquiry through our contact form.

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