The Court of Appeal in England and Wales have asked the European Court of Justice (ECJ) to consider if an online infringer can be held to account in specific member states if it is found to be selling counterfeit goods online, with a direct target on consumers in that country through a website.
Article 97(1) EUTM Regulation (207/2009/EC) states that action is to be taken against an infringer through the Court of the member state which the defendant lives. Although, it is also provided under Article 97(5) that action can also be taken in the member state that the infringement was committed. However, the issue for the Intellectual Property Enterprise Court was that as it is Spain that the counterfeit goods were infringing from and so jurisdiction was an issue for the Court.
Due to enhances in technology and how physical distribution was always the easiest way of showing infringement, websites are now being targeted in different jurisdictions far more and means that the application of Article 97(5) is more necessary.
For the purposes of this case, the ECJ ruled that a claim for infringement proceedings against a third party for advertising and offers for sale displayed electronically can be made before a Court of the member state where the consumers or traders to whom that offered was pointed at, providing it has a EU trade mark. This was the case even if the third party took decisions and steps necessary to bring about the electronic display in another member state.
The case in question in AMS Neve and others v Heritage Audio SL and others (Case C-172/18) EU:C:2019:674 (5 September 2019) for further reading.
There will be further hearings on this case and future case to determine whether a case should be redirected to the member state Court to be heard or whether it can remain in the jurisdiction of which the infringement took place.
This is another example of how the law is being tested because of technological changes which do not conform to the standard claim jurisdiction against those who infringe on others intellectual property with counterfeit goods.