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ECJ AMS Neve/Heritage Audio: place infringement online ads = place where the target group is located

A company elsewhere in the EU uses your EU trade mark in an online advertisement without permission. The advertisement is aimed at the Dutch public. As a Dutch trade mark owner, can you bring the infringer before a Dutch court? The Court of Justice of the European Union (ECJ) provided the answer in its judgment AMS Neve/Heritage Audio: yes.

The jurisdiction of the court in cases concerning infringement or validity of an EU trade mark is regulated in the EU Trade Mark Regulation. Such a case can be brought before the EU trade mark court (in the Netherlands: the court in The Hague) in the EU Member State where the defendant is domiciled. In that case, the court has jurisdiction in respect of infringement or threatened infringement within the territory of all EU Member States. The EU Trade Mark Regulation also provides for an alternative point of reference: an infringement case can also be brought before the EU trade mark court in the Member State in which the infringement took place or where it is threatened to take place. The key question in this case is therefore: what is the place of infringement? The answer to this question can be difficult when the infringement takes place across borders via the Internet, for example by means of an online advertisement aimed at the Netherlands but originating from another EU Member State.

In the Coty judgment, the ECJ had ruled that “infringement” refers to an active conduct of the alleged infringer. Of course, you soon think of the place where an infringing sales offer or advertisement has been actively put online (or at least where an active decision has been made to do so). Precisely in this line, the Court of The Hague ruled in 2017 in an incident of jurisdiction in the Novomatic/Betsoft case. When interpreting the concept of the place of infringement, the court based its judgment on the place where the decision was taken to start the technical process that led to the alleged infringement. In other words, the place where it was decided to put it online.

The ECJ has now ruled differently. With reference to the L’Oréal/eBay judgment, the ECJ observes that the action that consists in displaying advertisements and sales offers via the internet must be deemed to have been performed in the territory where the target group of those advertisements and offers is located, notwithstanding the fact that the defendant is established elsewhere, that the server of the electronic network that he uses is located elsewhere, or even that the products that are the subject of such advertising and offers for sale are located elsewhere. The target group determines the jurisdiction.

Foreign parties that advertise online in the Netherlands with unauthorized use of an EU trade mark must now take into account that they may have to answer for their actions before the court in The Hague.

Daniël Haije

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