The reference to the ECJ asks whether a prohibition issued by a Community trade mark court of a Member State has effect throughout the entire European Community or whether it becomes impotent at the rendering State’s borders. Since the Opinion itself is not available in English, we’re having to make do with the Press Release for the time being. (It contains a helpful link to the list of official translations of the Opinion, which includes Greek, Latvian, Finnish and Swedish, but not English). In it, the Advocate General is reported to have opined that:
“the [Community Trade Mark] Regulation confers jurisdiction on the competent national court to declare that a trade mark has been infringed in one or more Member States, so that its proprietor may apply to a single court in order to bring the acts of infringement to an end in several [note – not “all”] Member States. The declaration of infringement relates to a trade mark granted by the European Union, whose judicial protection is entrusted to special national courts of the EU and therefore, in principle, the declaration has effect throughout the entire area of the EU.
However, where the infringement or action for infringement is limited to a specific geographical or linguistic area, the court’s order is limited territorially. It follows that, since the prohibition is the natural consequence of the declaration of infringement, the territorial scope of the prohibition corresponds, in principle, to the scope of the infringement.”
What this appears to say is that the Courts of a Member State can make a declaration of infringement which might be limited to certain geographical areas or which might be unlimited, meaning that it is binding throughout the EC.
First, trade mark infringement actions require an assessment of the visual, aural and conceptual similarities of a mark and their impact on the mark’s essential function or the likelihood of confusion among the public. The AG’s Opinion might not have an impact on the protection of inherently distinctive marks, but what of marks that have only acquired sufficient distinctiveness to get on the register? Are Courts in any jurisdiction sufficiently well-equipped to determine whether such a mark has been infringed in a Member State where a different language and different customs exist? If not, then Courts will, no doubt, limit their declarations of infringement accordingly, and this opinion (and any subsequent judgment that follows it) won’t precipitate any real change to current practice.
Second, though, what if a Court decides that it does have competence to issue a pan-European declaration of CTM infringement? If that happens, that Member State is sure to very quickly become a hot-bed of CTM litigation. Brand owners will be certain to do what they can to secure jurisdiction in such a Court through the commencement of preemptive proceedings. In that regard, Internet sales will be an area to watch. The UK Court of Appeal has recently held that the online sale of goods into a territory is insufficient to provide that territory’s courts with personal jurisdiction (see Lucasfilm Ltd & Ors. -v- Ainsworth & Anor.  EWCA Civ 1328, summarized in my article “Not so long ago, in a courtroom not so far away…“), but not all Courts agree: California assumed the personal jurisdiction in Lucasfilm which the Court of Appeal rejected, and more recently the Court of Appeals for the Second Circuit (on an appeal from the Southern District of New York) suggested, without having to decide, that even the sale of a single item via the Internet could establish personal jurisdiction (see Chloe v. Queen Bee (full citation and links to follow)).
So, if you’re a Member State with sufficient self-interest, then perhaps you will be hoping the ECJ will follow the Advocate General, and are already preparing to react accordingly…
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