The European Court has ruled in the case C‑104/22 Lännen MCE Oy v Berky GmbH, Senwatec GmbH & Co. KG. This dispute focuses our attention on the issue which jurisdiction is relevant in the case of online infringement of EU trademarks and where the lawsuits should be initiated. The background of the case is as follows:
Lännen, a company established in Finland, manufactures, inter alia, amphibious dredgers which it markets under the EU trade mark WATERMASTER, registered on 12 July 2004 under number 003185758.
On 28 January 2020, that company brought an infringement action before the (Market Court, Finland against Berky and Senwatec, two companies established in Germany and belonging to the same group of undertakings.
Lännen complains that Senwatec committed an act of infringement in Finland, by using paid referencing, in an internet search engine operating under the national top-level domain for that Member State; accordingly, if the term ‘Watermaster’ was searched for, an advertisement for Senwatec’s products was displayed on that search engine’s website. Thus, in August 2016, when the term ‘Watermaster’ was searched for in Finland on the website http://www.google.fi the first result displayed was a Google Adwords advertisement for Senwatec’s products, separated from the other search results by a line and containing the word ‘Ad’.
The national court notes that neither the advertising link obtained by that search nor the associated text contained any elements specifically referring to Finland or the geographical area where the products were to be supplied. However, the referring court states that Senwatec’s website to which that advertising link led contained, inter alia, a text in English indicating that Senwatec’s products are used worldwide and a world map on which the countries in which Senwatec claimed to be active were highlighted in darker colours. Finland did not form part of those countries.
Lännen complains that Berky infringed its trade mark by using, in the period from 2005 to 2019, the natural referencing of images, freely accessible on the photo-sharing website Flickr.com, of Berky’s machines, by means of a meta tag containing the keyword ‘Watermaster’, which was intended to enable internet search engines to identify those images better. Thus, a search in Finland on http://www.google.fi using the term ‘Watermaster’ produced a link to a page showing images of Berky machines.
The referring court points out that the link displayed as a search result was not an advertising link, but an ‘organic’ search result. The captions for the images on the Flickr.com service included the names of the machines in English and, in addition, their model numbers. Berky’s logo also appeared in connection with the images. Each image was accompanied by several meta tags consisting in keywords in English and other languages, in particular the term ‘Watermaster’.
According to Lännen, Berky and Senwatec carried out marketing activities on the internet that were directed at the territory of Finland and were visible to consumers or traders in that Member State. It submits that Senwatec’s and Berky’s products are sold throughout the world. In Lännen’s view, the advertising at issue, which is in English, is addressed to an international public, and is aimed at every country in which it is visible.
In their defence, Berky and Senwatec challenge the jurisdiction of the referring court, on the ground that the alleged acts of infringements were not committed in Finland.
They maintain that their marketing activities were not targeted at Finland, a Member State where they do not offer their products for sale and on whose market they are not present. Neither the search result on http://www.google.fi nor the use of a meta tag using the keyword ‘Watermaster’ would establish that their activities targeted Finland. Thus, in order to establish the jurisdiction of the referring court, the decisive factor is not whether the allegedly illegal content is visible online in Finland, but rather whether that content has a relevant connecting factor with that Member State.
The referring court states that the parties disagree as to whether the map depicted on Senwatec’s website shows that the area of supply of Senwatec’s products is limited to a geographical area from which Finland appears to be excluded. According to Senwatec, the map is evidence that Finland is not part of the market area for the company’s products whereas, according to Lännen, the market for Senwatec’s products is global and extends beyond the areas covered by that map.
The referring court considers, in the context of ascertaining the jurisdiction of a court seised on the basis of the place where the act of infringement was committed, that it is appropriate, in order to determine the territories of the Member States in which the consumers or traders, to whom advertising posted on a website is directed, are situated, to take account, in particular, of the geographical areas where the products concerned are to be supplied.
That court nevertheless considers that other factors might prove relevant for the purposes of such a verification, as is apparent from the Opinion of Advocate General Szpunar in AMS Neve and Others (C‑172/18, EU:C:2019:276), without it being clear what those other factors might be, since the Court has not ruled on that point.
The referring court is uncertain, in particular, whether, in order to determine whether it has jurisdiction under Article 125(5) of Regulation 2017/1001, account may be taken of the Member State under whose national top-level domain the search engine website providing access to the advertisements constituting the alleged acts of infringement is operated.
In those circumstances the Market Court decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
‘Company A is established in Member State X, where it has its registered office, and has used on a website a sign identical to an [EU] trade mark belonging to Company B, in advertising or as a keyword.
(1) In the situation described above, may it be concluded that the advertising is directed at consumers or traders in Member State Y, where Company B has its registered office, and does an [EU] trade mark court in Member State Y have jurisdiction to hear an action for infringement of an [EU] trade mark under Article 125(5) of [Regulation 2017/1001] where, in the advertising published electronically or on an advertiser’s website connected to that advertising via a link, the geographical area where the goods are to be supplied is not specified, at least not expressly, or no individual Member State is expressly excluded from that area? May the nature of the goods to which the advertising relates and the fact that the market for Company A’s products is allegedly global and thus covers the entire territory of the European Union, including Member State Y, be taken into account in that respect?
(2) May it be concluded that the above advertising is directed at consumers or traders in Member State Y if it appears on a search engine website operated under the national top-level domain of Member State Y?
(3) If Question 1 or 2 is answered in the affirmative, what other factors, if any, should be taken into account in determining whether the advertisement is directed at consumers or traders in Member State Y?’
The Court’s decision:
Article 125(5) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark,
must be interpreted as meaning that the proprietor of an EU trade mark who considers that he or she has been prejudiced by the use, without his or her consent, by a third party, of a sign identical with that mark in online advertisements and offers for sale in respect of goods identical with, or similar to, those for which that mark is registered, may bring an infringement action against that third party before an EU trade mark court of the Member State in which consumers and traders targeted by those advertisements or offers for sale are located, notwithstanding the fact that the third party does not expressly and unambiguously list that Member State among the territories to which a supply of the goods in question might be made, if that third party has made use of that sign by means of paid referencing on a search engine website which uses a national top-level domain name of that Member State. By contrast, that is not the case simply because the third party concerned has used the natural referencing of images of its goods on an online photo-sharing service under a generic top-level domain, having recourse to meta tags using the trade mark concerned as a keyword.
INTELLECTUAL PROPERTY PLANET 