Online trade mark infringement ruling relevant for brand owners

Dr. Fabian Klein of Pinsent Masons was commenting after the Court of Justice of the EU (CJEU) considered under which circumstances claims for online trade mark infringement can be brought before a national court.

The CJEU was asked to consider the issues by a court in Finland where a manufacturing business, Lännen, alleged trade mark infringement by two companies in the same group based in Germany, Berky and Senwatec. Lännen took issue with keyword advertising bought by Senwatec on Google’s Finnish website, www.google.fi: users that searched for Lännen’s trademark ‘Watermaster’ on that site were presented with an advert for Senwatec’s products.

The circumstances complained of in relation to Berky’s activities were different. Berky applied the keyword ‘Watermaster’ as meta tags to images of its machines that were published on the photo-sharing website Flickr.com, which were then shown as organic search results on google.fi.

In both cases, the question arose whether the Finnish courts were competent to hear the infringement cases, and the Market Court in Finland referred its questions to the CJEU.

Klein said: “In situations of international online infringement, two different stages of a case have to be differentiated: the first question is which courts of which country are competent to hear and rule on the issue. The second is whether the alleged conduct in fact constitutes an infringement in that member state. This decision of the CJEU only dealt with the first question.”

Berky and Senwatec claimed their marketing activities were not targeted at Finland, that they did not offer their products for sale in Finland, and that they were not present in the Finnish market. They argued that neither the search result on www.google.fi nor the use of a meta tag was sufficient evidence that they were targeting Finland.

The CJEU agreed that some sort of targeting would be required. “In its answer, the CJEU took a very granular, but reasonable approach”, Klein commented. “It stated that there has to be at least some relevant connection with the country in which the court competence shall be established. Buying online ads for a country-specific website – here, www.google.fi – was found sufficient to establish such a connection, even if no sales activities in that country would exist. The display of search results via a generic top-level domain, like ‘.com’, on the other hand was not considered sufficient to establish such a connection,” he said.

“For brand owners, this means that the facts of a case must be assessed in quite some detail to determine where best to sue. This is something they should have in mind anyway since the requirements for an infringement are not the same everywhere. International businesses should therefore think about online infringements from a wholistic standpoint and determine where to commence legal action not based on where they feel most comfortable, such as in their home country, but where the chances of court competence and of that court finding an infringement are the highest,” Klein said.

According to Klein, the case law established by the CJEU in this case regarding online trade mark infringement applies a higher standard in respect of establishing court jurisdiction to some extent than that established by the German Federal Court in copyright infringement cases. He said the German Federal Court assumes the competence of German courts more easily in such cases on the basis that online content is merely accessible in Germany, whereas he said the CJEU has said that there will have to be a form of targeting of an online offer to the member state concerned for the court in that country to have jurisdiction over the dispute at issue. Thus, Klein said, not all IP rights might be treated equally.