AMS Neve Ltd & Ors v Heritage Audio S.L. & Anor

This is an application by the defendants pursuant to CPR Part 11 for a declaration that the English courts do not have jurisdiction to try the claim. The claim is for infringement of three trade marks and for passing off.

The first claimant (“AMS Neve”) is a UK-based manufacturer of audio equipment. The second claimant (“BW Trustees”) is a non-trading trustee of the AMS Neve executive pension scheme. The third defendant (“Mr Crabtree”) is a director and shareholder of AMS Neve.

BW Trustees and Mr Crabtree jointly own the three registered trade marks alleged to be infringed. One is an EU Trade Mark which takes the form of the digits ‘1073’. The other two are UK registered marks for logos incorporating a stylised sine wave. All three marks are registered for goods in Class 9, being goods associated with sound recording and processing.

The first defendant (“Heritage Audio”) is a Spanish company based in Madrid which trades in audio equipment. The second defendant (“Mr Arribas”) is the sole director of Heritage Audio. He is domiciled in Spain.

The claimants allege that Heritage Audio has offered for sale and sold equipment by reference to signs confusingly similar to each of the three trade marks. They say that such offers and sales have occurred, among other places, in the United Kingdom. They argue that such acts constituted infringement of their three trade marks and also passing off. Mr Arribas is said to be jointly liable for the acts of Heritage Audio.

Use of the signs in question is not in dispute. The primary point at issue in this application is whether Heritage Audio has carried out any act in the UK which is subject to the jurisdiction of the English courts. There is also a secondary point: if the court has jurisdiction in relation to the claim against Heritage Audio, does it also have jurisdiction in relation to the claim against Mr Arribas as alleged joint tortfeasor? I will return to this after considering the primary question.

The jurisdiction of the court with regard to both the UK trade marks and passing off is governed by Regulation (EU) No. 1215/2012 of 12 December 2012, referred to in the Civil Procedure Rules as ‘the Judgments Regulation’ and sometimes called ‘the Re-cast Brussels I Regulation’, being the successor to Regulation (EC) No. 44/2001. For brevity I will call it ‘Brussels I’. The claimants rely on art.7(2) (ex-art.5(3)) of Brussels I. It is one of the several exceptions to the general rule set out in art.4, namely that persons domiciled in a Member State shall be sued in that State:

“General provisions

Article 4

1.

Subject to this Regulation, persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State.

2.

Persons who are not nationals of the Member State in which they are domiciled shall be governed by the rules of jurisdiction applicable to nationals of that Member State.

Art.7(2) provides:

“Special jurisdiction

Article 7

A person domiciled in a Member State may be sued in another Member State:

…

(2)

in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur;”

In conformity with this, CPR 6.33(2) permits a claimant to serve a claim form on a defendant outside the UK where the court has power to determine the claim under Brussels I.

It has for some time been established by the case law of the Court of Justice of the European Union that the expression ‘place where the harmful event occurred or may occur’ in art.7(2) is intended to cover both (a) the place where the damage occurred and (b) the place of the event giving rise to the damage. The defendant may be sued, at the option of the claimant, in the courts of either of those places (see for example Case 21/76 Mines de Potasse d’Alsace [1976] E.C.R. 1735 and more recently Case C-228/11 Melzer EU:C:2013:305, at [25] and Case C-360/12 Coty Germany GmbH v First Note Perfumes NV [2014] E.T.M.R. 49 at [46]).

In Case C-523/10 Wintersteiger AG v Products 4U Sondermaschinenbau GmbH EU:C:2012:220; [2012] E.T.M.R. 31 the Austrian claimant made and sold ski and snowboard servicing tools under its WINTERSTEIGER trade mark. The defendant was a German company which conducted a similar business. The defendant reserved the keyword ‘Wintersteiger’ on Google’s top level German domain, google.de. The consequence was that an internet user using the google.de search engine who entered the word ‘Wintersteiger’ would be directed to the claimant’s website and, in addition, to an advertisement for the defendant’s business. The defendant’s advertisement contained the heading Skiwerkstattzubehör (Ski workshop accessories) and if the user clicked on that, it would bring up a page offering for sale Wintersteiger-Zubehör (Wintersteiger accessories). No such keyword had been reserved by the defendant on the Austrian Google domain. The Claimant brought an action in Austria for infringement of its Austrian mark. The use of ‘Wintersteiger’ in the defendant’s online advertisement was alleged to infringe.

The Court considered first the place where the damage occurred. It pointed out:

“[25] … the protection afforded by the registration of a national mark is, in principle, limited to the territory of the Member State in which it is registered, so that, in general, its proprietor cannot rely on that protection outside the territory.”

The Court went on to say this:

“[27] With regard to jurisdiction to hear a claim of infringement of a national mark in a situation such as that in the main proceedings, it must be considered that both the objective of foreseeability and that of sound administration of justice militate in favour of conferring jurisdiction, in respect of the damage occurred, on the courts of the Member State in which the right at issue is protected.

[28] It is the courts of the Member State in which the trade mark at issue is registered which are best able to assess, taking account of the interpretation of Directive 2008/95 in, inter alia, Google France Sarl v Louis Vuitton Malletier SA, (C-236–238/08) [2010] E.T.M.R. 30 and L’Oréal SA v eBay International AG (C-324/09) [2011] E.T.M.R. 52, whether a situation such as that in the main proceedings actually infringes the protected national mark. Those courts have the power to determine all the damage allegedly caused to the proprietor of the protected right because of an infringement of it and to hear an application seeking cessation of all infringements of that right.

[29] Therefore it must be held that an action relating to infringement of a trade mark registered in a Member State through the use, by an advertiser, of a keyword identical to that trade mark on a search engine website operating under a country-specific top-level domain of another Member State may be brought before the courts of the Member State in which the trade mark is registered.”

Thus, in the case of alleged infringement of a national registered trade mark, the courts of the Member State in which it is registered will have jurisdiction as the place where the damage occurred. In Case C-170/12 Pinckney v KDG Mediatech AG EU:C:2013:635; [2014] F.S.R. 18, which concerned a claim for infringement of copyright, the Court broadened this principle to IP rights generally: the place where the damage can potentially occur, consequent upon the infringement of apparently any IP right, is the place where the right subsists:

“[33] Secondly, the likelihood of the damage occurring in a particular Member State is subject to the requirement that the right in respect of which infringement is alleged is protected in that Member State (see Wintersteiger at [25]).”

The use of the terms ‘in general’ and ‘in principle’ in paragraph 25 of Wintersteiger could be taken to imply that the rule is not invariable. The Court returned to the rule in Case C-360/12 Coty Germany GmbH v First Note Perfumes NV [2014] E.T.M.R. 49:

“[55] With regard to damage resulting from infringements of an intellectual and commercial property right, the Court has stated that the occurrence of damage in a particular Member State is subject to the protection, in that State, of the right in respect of which infringement is alleged (see Wintersteiger (C-523/10) EU:C:2012:220, at [25], and Pinckney, (C-170/12) EU:C:2013:635, at [33]).”

In this context the Court was concerned with right provided by German unfair competition law. It stated that the rule referred to in [55] applied equally to a right afforded under a national law against unfair competition. The Court continued:

“[57] It must therefore be held that, in circumstances such as those of the main proceedings, an action relating to an infringement of that law may be brought before the German courts, to the extent that the act committed in another Member State caused or may cause damage within the jurisdiction of the court seised.

[58] In that regard, it is for the court seised to assess, in the light of the evidence at its disposal, the extent to which the sale of the 'Blue Safe for Women' perfume to Stefan P., which occurred in Belgium, was capable of infringing provisions of the German law against unfair competition and, thereby, of causing damage within the jurisdiction of that court.”

I interpret this to mean that in the context of an alleged infringement of an IP right the place where the damage occurred will always be the Member State (or the part of a Member State) in which the IP right subsists. Therefore the courts of that Member State will always have jurisdiction over the claim. The court seised must assess whether there has been damage within its jurisdiction. This could generally only arise from an act committed within the jurisdiction but it is possible for an act done outside the jurisdiction to give rise to damage within it.

With regard to the latter possibility, it may be that the Court’s ruling in paragraph 58 is to be taken to mean that this is a matter for national law. If so and if national law does not recognise infringement of a national IP right unless an act is done within the jurisdiction, then relevant damage can flow only from acts done there, the place where the IP right subsists. In any event, this broader potential ground of jurisdiction based on acts done outside the UK was not raised in the present case and I need pursue it no further.

Separately from this, national law may determine whether the claimant has adduced sufficient evidence to pursue his claim (see below).

As I have indicated, in Wintersteiger the Court found that the place where the damage occurred was the place where the trade mark was registered: Austria. The Austrian courts therefore had jurisdiction. The Court nevertheless also considered the location of the place of the event giving rise to the damage:

“[32] It is, in particular, established that the place where the event giving rise to an alleged damage occurred may constitute a significant connecting factor from the point of view of jurisdiction, since it could be particularly helpful in relation to the evidence and the conduct of proceedings.

[33] In a situation such as that in the main proceedings, the advantage presented by the place where the event giving rise to an alleged infringement occurred includes the ease with which the court there may gather evidence relating to that event.

[34] In the case of an alleged infringement of a national trade mark registered in a Member State because of the display, on the search engine website, of an advertisement using a keyword identical to that trade mark, it is the activation by the advertiser of the technical process displaying, according to pre-defined parameters, the advertisement which it created for its own commercial communications which should be considered to be the event giving rise to an alleged infringement, and not the display of the advertisement itself.

[35] As the Court has already held in the context of interpretation of the directive to approximate the laws of the Member States relating to trade marks, it is the advertiser choosing a keyword identical to the trade mark, and not the provider of the referencing service, who uses it in the course of trade (Google France and Google, paragraphs 52 and 58). The event giving rise to a possible infringement of trade mark law therefore lies in the actions of the advertiser using the referencing service for its own commercial communications.

[36] It is true that the technical display process by the advertiser is activated, ultimately, on a server belonging to the operator of the search engine used by the advertiser. However, in view of the objective of foreseeability, which the rules on jurisdiction must pursue, the place of establishment of that server cannot, by reason of its uncertain location, be considered to be the place where the event giving rise to the damage occurred for the purpose of the application of Article 5(3) of Regulation No 44/2001.

[37] By contrast, since it is a definite and identifiable place, both for the applicant and for the defendant, and is therefore likely to facilitate the taking of evidence and the conduct of the proceedings, it must be held that the place of establishment of the advertiser is the place where the activation of the display process is decided.

[38] It follows from the foregoing that an action relating to alleged infringement of a trade mark registered in a Member State through the use, by an advertiser, of a keyword identical to that trade mark on a search engine website operating under a country-specific top-level domain of another Member State may also be brought before the courts of the Member State of the place of establishment of the advertiser.”

Superficially, at least in the context of internet advertising, the Court ruled that the place of the event giving rise to damage is the place where the advertiser is established. However, I think the law as decided in Wintersteiger is more nuanced than that. An important question is: what constitutes the relevant event? At one point the Court referred to what appear to be physical acts, namely the actions of the advertiser using google.de’s referencing service for its own commercial communications, see paragraph 35. Elsewhere, it is the location of the relevant mental act that matters: the choosing of the keyword identical to the trade mark (see paragraph 35) or the place where the activation of the display process is decided (see paragraph 37). This may have been left unclear because it was not a matter on which the Court had to decide: all such acts occurred at the place of establishment of the advertiser, i.e. the defendant. It followed that in this instance the German courts would have had alternative jurisdiction.

It is possible to imagine facts in which the defendant is established in Member State A, takes the relevant decision in Member State B which leads to a relevant physical act in Member State C, which in turn gives rise to the infringement complained of. With that in mind it is to be noted that the rationale behind identifying the place of the occurrence of the event giving rise to the damage is that it should be the place most likely to facilitate the taking of evidence and the conduct of the proceedings, see paragraphs 32 and 37 of Wintersteiger and Coty at paragraph 47.

Related to this, the Court ruled out the location of the server belonging to the google.de search engine as the relevant place, even though the technical display process leading to the advertisement complained of happened there. This was because of the uncertainty of the location of the server, which would make the place where the courts have jurisdiction correspondingly uncertain, see Wintersteiger at paragraph 36.

Whichever courts have jurisdiction, in relation to an allegation of infringement of a national trade mark the claimant must establish that the defendant has carried out an infringing act. Article 5 of Directive 2008/95/EC defines in paragraphs (1) and (2) the type of signs, the use of which infringe a trade mark. Art.5(3) identifies non-exhaustively what will constitute the use of a sign:

“3.

The following, inter alia, may be prohibited under paragraphs 1 and 2:

(a)

affixing the sign to the goods or to the packaging thereof;

(b)

offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;

(c)

importing or exporting the goods under the sign;

(d)

using the sign on business papers and in advertising.”

With regard to passing off, following the reasoning of the Court of Justice in Wintersteiger and Coty it seems to me that jurisdiction pursuant to art.7(2) of Brussels I to hear an allegation of passing off contrary to English common law will always be optionally conferred on the courts of England and Wales, this being the place where the right subsists and thus the place where the damage potentially occurred. The claimant will also have to establish that an act of passing off has occurred or is threatened in England and Wales (leaving aside the possibility in law, considered above, that actionable damage could occur in England and Wales consequent upon an act elsewhere).

By way of alternative, jurisdiction is also conferred on the courts of the place of the event giving rise to the damage. The latter will be the place most likely to facilitate the taking of evidence and the conduct of the proceedings. This will usually – though perhaps not inevitably – be the place where the relevant decisions and actions by the defendant took place which, in turn, is likely to be the place where the defendant is established.

The jurisdiction to hear claims in relation to EU Trade Marks is governed not by Brussels I, but by Council Regulation (EC) No. 207/2009 (“the Trade Mark Regulation”), as amended by Regulation (EU) 2015/2424 of the European Parliament and Council. The application of art.7(2) (ex-art.5(3)) is expressly precluded, see for example Coty at [28].

By reason of CPR 6.33(3) a claimant may serve a claim form regarding a claim in relation to an EU Trade Mark on a defendant outside the UK where the Trade Mark Regulation confers power to determine the claim on the English courts.

The allocation of jurisdiction under the Trade Mark Regulation is similar to that of Brussels I to some extent: primacy is given to the courts of the Member State in which the defendant is domiciled, but there are exceptions. Art.97(1) provides:

“Article 97

International jurisdiction

1.

Subject to the provisions of this Regulation as well as to any provisions of Regulation (EC) No 44/2001 applicable by virtue of Article 94, proceedings in respect of the actions and claims referred to in Article 96 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment.”

The exceptions to this general rule include that relied on by the claimants in these proceedings, set out in art.97(5):

“5.

Proceedings in respect of the actions and claims referred to in Article 96, with the exception of actions for a declaration of non-infringement of a Community trade mark, may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened, or in which an act within the meaning of Article 9(3), second sentence, has been committed.”

The actions and claims referred to in art.96 of the Trade Mark Regulation include infringement actions such as that brought by the claimant in the present proceedings. (I return to art.9(3), second sentence, below).

However, the concept of ‘the Member State in which the act of infringement has been committed or threatened’ in art.97(5) of the Trade Mark Regulation is to be interpreted independently of the notion of ‘the place where the harmful event occurred or may occur’ in Brussels I, see Coty at [31].

This concept was considered in Coty. The facts were these. The claimant, Coty Germany, was a German company which made and sold cosmetics. It owned a number of trade marks including the three-dimensional EU Trade Mark in issue. The defendant was a Belgian perfume wholesaler. The defendant sold, in Belgium, a perfume called ‘Blue Safe for Women’ to a German distributor. The German distributor re-sold this perfume in Germany. Coty Germany brought an action in Germany against the Belgian defendant only. It alleged that the sale in Belgium by the defendant to the German distributor infringed both Coty Germany’s EU Mark and German unfair competition law. A reference was made by the Bundesgerichtshof to the CJEU concerning firstly art.93(5) of the Trade Mark Regulation then in force (corresponding to the current art.97(5)) and secondly art.5(3) of the Brussels Regulation in force at the relevant time in relation to German unfair competition law.

Bearing in mind the significance of the judgment in Coty to this case, I asked counsel to address me on the Opinion of Advocate General Jääskinen as well as the judgment of the Court. It was common ground that the Court agreed with the Advocate General’s Opinion which therefore casts helpful light on the judgment itself.

The Advocate General summarised the first question put to the Court in this way:

“[38] The Court is called upon to give a ruling as to the possibility of conferring jurisdiction by virtue of a connecting factor, whereby under art.93(5) of the Community Trade Mark Regulation it would be possible to sue a defendant on the sole ground that he had participated indirectly, in one Member State, in a purported act of infringement committed principally, in another Member State, by a third party who is not a defendant in the proceedings brought in the courts of the latter Member State.”

Having emphasised that art.93(5) was to be interpreted independently of art.5(3) of Brussels I (now art.7(2)), the Advocate General answered the question in this way:

“[44] I therefore consider that the answer to the first question referred for a preliminary ruling should be that, for an alleged act of infringement to be regarded as having been committed in a Member State for the purposes of art.93(5) of the Community Trade Mark Regulation, and thus to make it possible to establish the jurisdiction of the courts of that Member State, it is not sufficient that the defendant participated indirectly, by means of an act taking place in another Member State, in the infringement of the rights relating to the Community trade mark which was committed in the former Member State by a third party who is not a defendant in the proceedings before the courts.”

This is of limited assistance in the present case because of the key fact in Coty that the infringer of the EU Trade Mark was not a party to the proceedings – the allegation was that the Belgian defendant had participated indirectly in the infringement committed in Germany by having earlier sold, in Belgium, the relevant goods to the infringer. However, before turning to specifics the Advocate General made more general observations about the identity of the place where the act of infringement has been committed:

“[31] Thus the place where the act of infringement was committed is a narrower concept than the place where the harmful event occurred. Moreover, the vocabulary used in art.93(5) seems to point to active conduct, which would be more meaningful if applied to the place of the event giving rise to the damage rather than to the place where the damage occurred, whereas the broad interpretation of art.5(3) of the Brussels I Regulation appears to have been facilitated by the more neutral terminology used there. Lastly, I would point out that the scope of the jurisdiction conferred by either of those provisions differs in various aspects, which lessens correspondingly the usefulness of any assimilation.

[32] It can, in my view, be inferred from the specific features of the wording of art.93(5), viewed in the context in which this provision was drafted, that it does not create jurisdiction by reason of the place where the damage occurred. Analogous application of the Mines de Potasse d’Alsace judgment to that provision must therefore be ruled out.”

This suggests that jurisdiction conferred under art.97(5) (ex-93(5)) will not be the place where the trade mark is registered, but the place of the defendant’s active conduct – which may or may not be the same thing as the place of the event giving rise to the damage within the meaning of art.7(2) of Brussels I.

The Court in Coty agreed with the Advocate General on the independent interpretation of art.93(5) (now art.97(5)):

“[31] With regard to the interpretation of art.93(5), … the concept of ‘the Member State in which the act of infringement has been committed or threatened’, referred to in that provision, must be interpreted independently of the concept of ‘the place where the harmful event occurred or may occur’ referred to in art.5(3) of Regulation 44/2001.”

The Court went on to discuss the factor which links the place of jurisdiction with the act of infringement:

“[34] With regard to the wording of art.93(5) of Regulation 40/94, the concept of ‘the Member State in which the act of infringement has been committed’ implies, as the Advocate General stated in point 31 of his Opinion, that that linking factor relates to active conduct on the part of the person causing that infringement. Therefore, the linking factor provided for by that provision refers to the Member State where the act giving rise to the alleged infringement occurred or may occur, not the Member State where that infringement produces its effects.

[35] It should also be noted that the existence of jurisdiction under art.93(5) based on the place where the alleged infringement produces its effects would conflict with the wording of art.94(2) of that regulation, which limits the jurisdiction of Community trade mark courts under art.93(5) to acts committed or threatened in the Member State where the court seised is situated.

[36] Furthermore, as the Advocate General stated in points 28 and 29 of his Opinion, both the origin and the context of Regulation 40/94 confirm the intention of the EU legislature to derogate from the rule on jurisdiction provided for in art.5(3) of Regulation 44/2001 in the light, in particular, of the inability of the rule on jurisdiction to respond to the specific problems relating to the infringement of a Community trade mark.

“[37] Consequently, jurisdiction under art.93(5) of Regulation 40/94 may be established solely in favour of Community trade mark courts in the Member State in which the defendant committed the alleged unlawful act.”

Ms Reid, who appeared for the defendants, submitted that the upshot is that jurisdiction under art.97(5) is conferred on the place of the event giving rise to the damage – as would be understood in the context of art 7(2) of Brussels I. In effect, one of the two alternative places of jurisdiction under art.7(2) is dropped. Mr Moss, who appeared for AMS Neve, agreed. I am not so sure that this will always be the case, bearing in mind the Court’s emphasis in Coty on the independent interpretation of art.97(5) (ex-93(5)) and the fact that the Court could have stated that one of the places awarded jurisdiction under art.5(3) (now art.7(2)) of Brussels I is the same as the place to which jurisdiction is conferred under art.93(5) (now art.97(5)) of the Trade Mark Regulation, but did not do so. Nonetheless, on the present facts I am prepared to assume that there is a considerable, perhaps total, overlap.

As in the context of a national trade mark, whichever court has jurisdiction it must be satisfied that the defendant has committed an act of infringement. The difference is that the act can have been committed anywhere in the EU. It must be an act recognised by arts.9-14 of the Trade Mark Regulation. So far as is relevant to this application, art.9(1) sets out the categories of sign the use of which a trade mark proprietor may prevent and art.9(2) identifies, non-exclusively, what will constitute the use of a sign:

“2.

The following, inter alia, may be prohibited under paragraph 1:

(a)

affixing the sign to the goods or to the packaging thereof;

(b)

offering the goods, putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;

(c)

importing or exporting the goods under that sign;

(d)

using the sign on business papers and in advertising.”

As appears from art.97(5), the article confers jurisdiction on UK courts not only where an act of infringement in the straightforward sense is committed or threatened, but also where an act within the meaning of art.9(3), second sentence, has been committed or threatened. The second sentence of art.9(3) concerns acts done between the date of publication of an EU Trade Mark application and the date of publication of its registration. With certain qualifications that do not matter here, such acts may also constitute an infringement of rights afforded to the proprietor of an EU Trade Mark.

Similarly, the rights of the proprietor of a UK trade mark have effect from the date of filing of the application for registration, with certain qualifications – see s.9(3) of the Trade Marks Act 1994.

Therefore, in the present application the investigation of acts done with regard to infringement of the trade marks went back to the date on which the relevant application for the trade mark was filed or published, as the case may be.

With regard to passing off, Heritage Audio could have made an actionable misrepresentation in England at any time since AMS Neve acquired goodwill in this jurisdiction. The claimants pleaded that this happened in 1970. Whether or not that is right, it was common ground that, assuming AMS Neve has goodwill at all, it goes back far enough such that all the alleged acts of misrepresentation happened since then. Dates were therefore not an issue.

Important among the acts relied on by AMS Neve for its case both on trade mark infringement and passing off, were offers of sale in England. Where such alleged offers were made on the internet, to be actionable they must have been offers targeted at customers in England. In Case C-324/09 L’Oréal S v eBay International AG [2011] R.P.C. 27 the CJEU said this:

“[64] It must, however, be made clear that the mere fact that a website is accessible from the territory covered by the trade mark is not a sufficient basis for concluding that the offers for sale displayed there are targeted at consumers in that territory (see, by analogy, Joined Cases C-585/08 and C-144/09 Pammer v Reederei Karl Schlüter GmbH & Co KG and Hotel Alpenhof v Oliver Heller [2010] ECR I-12527, paragraph 69). Indeed, if the fact that an online marketplace is accessible from that territory were sufficient for the advertisements displayed there to be within the scope of Directive 89/104 and Regulation No 40/94, websites and advertisements which, although obviously targeted solely at consumers in third States, are nevertheless technically accessible from EU territory would wrongly be subject to EU law.

[65] It therefore falls to the national courts to assess on a case-by-case basis whether there are any relevant factors on the basis of which it may be concluded that an offer for sale, displayed on an online marketplace accessible from the territory covered by the trade mark, is targeted at consumers in that territory. When the offer for sale is accompanied by details of the geographic areas to which the seller is willing to dispatch the product, that type of detail is of particular importance in the said assessment.”

Mr Moss relied on what the CJEU said in Case C-170/12 Pinckney v KDG Mediatech AG EU:C:2013:635; [2014] F.S.R. 18:

“[41] At the stage of examining the jurisdiction of a court to adjudicate on damage caused, the identification of the place where the harmful event giving rise to that damage occurred for the purposes of Article 5(3) of the Regulation cannot depend on criteria which are specific to the examination of the substance and which do not appear in that provision. Article 5(3) lays down, as the sole condition, that a harmful event has occurred or may occur.

[42] Thus, unlike Article 15(1)(c) of the Regulation, which was interpreted in Joined Cases C-585/08 and C-144/09 Pammer and Hotel Alpenhof [2010] ECR I-12527, Article 5(3) thereof does not require, in particular, that the activity concerned to be ‘directed to’ the Member State in which the court seised is situated.

[43] It follows that, as regards the alleged infringement of a copyright, jurisdiction to hear an action in tort, delict or quasi-delict is already established in favour of the court seised if the Member State in which that court is situated protects the copyrights relied on by the plaintiff and that the harmful event alleged may occur within the jurisdiction of the court seised.

[44] In circumstances such as those at issue in the main proceedings that likelihood arises, in particular, from the possibility of obtaining a reproduction of the work to which the rights relied on by the defendant pertain from an internet site accessible within the jurisdiction of the court seised.

…

[47] In the light of all of the foregoing, the answer to the questions referred is that Article 5(3) of the Regulation must be interpreted as meaning that, in the event of alleged infringement of copyrights protected by the Member State of the court seised, the latter has jurisdiction to hear an action to establish liability brought by the author of a work against a company established in another Member State and which has, in the latter State, reproduced that work on a material support which is subsequently sold by companies established in a third Member State through an internet site also accessible with the jurisdiction of the court seised. That court has jurisdiction only to determine the damage caused in the Member State within which it is situated.”

The CJEU has thus drawn a distinction between at least some types of copyright claim on the one hand and Pammer and Hotel Alpenhof on the other. The latter concerned consumer contracts and whether commercial or professional services had been directed to a particular Member State within the meaning of art.15(1)(c) of Regulation 44/2001 (the predecessor to the current Brussels I Regulation). The Court’s ruling in L’Oréal – regarding the targeting of customers in a Member State by a website as a requirement of the use of a sign and trade mark infringement in that Member State – was not mentioned in the Court’s judgment in Pinckney. I therefore take the law set out in L’Oréal to remain good law. It is not necessary for me to pursue the rationale distinguishing copyright claims from trade mark claims. (See also the discussion by Advocate General Jääskinen in Pinckney ECLI:EU:C:2013:400, at [59]-[71]. The Advocate General favoured the criterion of targeting in relation to all IP rights).

In Omnibill (Pty) Ltd v Egpxxx Ltd [2014] EWHC 3762 (IPEC); [2015] E.C.D.R. 1, Birss J was concerned with alleged infringement of copyright in photographs and in particular whether a website on which the photographs appeared was targeted at the UK. The question whether proof of targeting is necessary in the context of copyright may or may not have been overtaken by the judgment of the Court in Pinckney. However the judge’s discussion of the matters to be taken into account when considering whether a website targets the UK holds good:

“[12] It is clear that the question of whether a website is targeted to a particular country is a multi-factorial one which depends on all the circumstances. Those circumstances include things which can be inferred from looking at the content on the website itself and elements arising from the inherent nature of the services offered by the website. These are the kinds of factors listed by the CJEU in Pammer [2010] E.C.R. I-12527 in the passage cited by Arnold J [in EMI Records Ltd v British Sky Broadcasting Ltd [2013] EWHC 379 (Ch), at [50]]. However as can be seen from [51] of Arnold J’s judgment he took other factors into account too, such as the number of visitors accessing the website from the UK. I agree with Arnold J that these further factors are relevant. Their relevance shows that the question of targeting is not necessarily simply decided by looking at the website itself. Evidence that a substantial proportion of visitors to a website are UK-based may not be determinative but it will support a conclusion that the acts of communication to the public undertaken by that website are targeted at the public in the UK.”

Notwithstanding this being an application by the defendant, as a matter of English law the claimants bore the burden of proof to show on the evidence that this court has jurisdiction to determine their claim. The standard of proof was that of a good arguable case, see Canada Trust Co v Stolzenberg (No 2) [1998] 1 WLR 547, at 555–9.

For both EU and UK trade marks, the acts of the Heritage Audio in the UK relied on by the claimants as acts of infringement were the advertisement, offer for sale and sale of goods under or by reference to the signs complained of.

The relevant acts said to constitute passing off in England largely overlapped in that they include the sale and offer for sale of Heritage Audio’s products under the signs complained of, thus alleged to constitute misrepresentations to the public in this country. The acts relied on went slightly wider: certain statements made on Heritage Audio’s website and on its social media pages were alleged wrongly to imply an association between Heritage Audio and AMS Neve.

Mr Moss directed my attention in particular to the following evidence on which he relied in support of the contention that Heritage Audio had offered for sale and sold goods bearing at least one of the signs complained of in England:

The evidence on behalf of the defendants came from the second defendant, Mr Arribas. In his second witness statement he stated unequivocally (at [17]):

“To be clear, Heritage Audio does not sell its products other than in Spain and the products have to be collected by the purchasers. Heritage Audio does not offer its products for sale on its website.”

In his first witness statement he said this (at [18]):

“It is correct that products of Heritage Audio can be purchased via various independent outlets in other countries. Any sales made to such companies are always made in Euros and these customers are required to collect the goods in Spain or to arrange for their own delivery of the goods in question.”

This in the end marked the sole point of contention on the evidence at the hearing. While reserving their right to raise any argument subsequently, the defendants did not for this purpose deny that the signs complained of were used on their goods and in their advertising, including Heritage Audio’s website, or that the use of the signs could arguably constitute an infringement. The argument advanced by Ms Reid was that the evidence did not support the claimants’ case that Heritage Audio had ever used the signs in England. This was because Heritage Audio had never itself supplied any goods to England and had never advertised or offered to sell its products in England. Heritage Audio’s business was conducted exclusively in Spain with intermediaries who may sometimes sell on in other parts of the EU, including the UK. But trading outside Spain formed no part of Heritage Audio’s business.

Mr Arribas said that the invoice dated 31 August 2012 to Tom Fuller in London related to a sale made in Spain by Heritage Audio to Mr Fuller.

Mr Arribas knew of an individual called ‘Lawrence’ at SX Pro in London. This Lawrence, according to Mr Arribas’s understanding, was in charge of graphic design and web page appearance rather than sales. Mr Arribas said that Heritage Audio had in any event never received a purchase order from someone called Lawrence at SX Pro.

Regarding Heritage Audio’s website, Mr Arribas acknowledged that it identified a UK retailer, though he said it was not authorised. However, he said that it would not make commercial sense not to notify people viewing the website of places where they may be able to purchase the company’s products.

It seems to me that Mr Arribas’s acknowledgment that it made commercial sense to notify individuals whom Heritage Audio expected to view its website where they could purchase the company’s products, including in the UK, was also a realistic concession that the website was directed to consumers in the UK among other places. The website featured the signs complained of.

Ms Reid argued that nonetheless, bearing in mind Heritage Audio’s geographically localised business model, the website amounted to no more than an invitation to treat. An invitation to treat under an offending sign was not an offer for sale and therefore not an infringing act, even arguably.

I disagree for two reasons. First, it seems to me that Heritage Audio’s website is advertising that company’s goods. It is doing so under the signs complained of and the website is directed to potential customers in the UK, among other places. Secondly, I think that a reasonable visitor to the website reading the FAQ page and the terms of sale, particularly a visitor based in the EU, would take the website to be an offer of sale by Heritage Audio. It may or may not transpire that sales to the customer would in fact be effected by another party, even where the customer asks Heritage Audio to sell directly, but that would not alter what had by then been offered by reference to an allegedly infringing sign.

In addition, there seems to be an inconsistency between what Heritage Audio offers on its website and Mr Arribas’s insistence that Heritage Audio would never in any circumstances supply an end-consumer with any of its products. Mr Arribas said that this inconsistency was due to the relevant sections of the website being obsolete. Although I give it less weight, there is also Ms. Winstanley’s conversation with ‘Lawrence’ which at least on its face seems inconsistent with Heritage Audio’s style of business as described by Mr Arribas.

I find that on the evidence before me, taken together, the claimants have a good arguable case for the proposition that Heritage Audio advertised and offered for sale in the UK its goods under the signs complained of. Without suggesting a likely outcome at trial once all the issues and evidence at trial have been fully explored, at this stage and on the limited evidence I have seen, I am satisfied that the claimants have a good arguable case that at least to some degree, possibly only a limited degree, the UK mark has been infringed and there has been passing off.

For the reasons I have discussed, the English courts have jurisdiction in relation to the UK Trade Marks and passing off if there is a sufficiently arguable case that Heritage Audio has either advertised, offered for sale or sold its goods by reference to the sign complained of in England. On the provisional findings I have made relating to the facts, I conclude that this court has jurisdiction.

The position is not the same with regard to the EU Trade Mark. On counsel’s initial concession, only the Spanish courts have jurisdiction because Heritage Audio is established in Spain.

However, Mr Moss, as he continued his submissions, qualified his earlier concession that jurisdiction conferred under art.97(5) is to one of the two places to which jurisdiction is allotted under art.7(2) of Brussels I, namely the place of the event giving rise to the damage – which, according to the ruling in Wintersteiger and on the present facts is the place where the defendant is established. He argued that there could be more than one event giving rise to the damage. One of them was the act of setting up or alternatively the decision to set up the website in Spain. The other event was the appearance of the offending signs on Heritage Audio’s website and that happened inter alia in England. Mr Moss argued that this second event was sufficient to confer jurisdiction on the English courts. He also submitted that if the narrower interpretation of art.97(5) were right, in practice it would provide no exception to the general rule under art.97(1), that defendants should be sued in their place of domicile.

A party’s place of establishment and its place of domicile need not necessarily be the same. But I agree that on the interpretation of art.97(5) which I have adopted above, in many instances the effect of that provision will be limited. Nonetheless, on my understanding of the judgment of the CJEU in Coty, that is the law. In my view the Court in its judgment drew a conscious distinction between, on the one hand, the event of taking steps to put a sign on a website or alternatively the event of taking a decision to that effect and, on the other hand, the event of the display of the sign on the website. Only the courts of the place where the former event(s) take place have jurisdiction, in particular where locating the action in that place is most likely to facilitate the taking of evidence and the conduct of the proceedings for infringement of the EU Trade Mark.

There may be something to be said, by way of procedural efficiency, for the same court to hear the claim for infringement of the EU Mark as well as those for infringement of the UK Marks and for passing off. This was not raised, nor was it suggested that any provision of the Trade Mark Regulation or Brussels I would permit consolidation. Furthermore, I see no risk of irreconcilable judgments.

The defendants’ application succeeds in relation to AMS Neve’s claim against Heritage Audio for infringement of the EU Trade Mark. The application fails in relation to the claims for infringement of the UK Trade Marks and passing off. This court has jurisdiction to hear the latter claims.

Necessarily AMS Neve’s claim against Mr Arribas for joint tortfeasance in relation to the claim for infringement of the EU Trade Mark falls away.

Otherwise, it was common ground that Mr Arribas is the sole director of Heritage Audio. In his evidence Mr Arribas did not deny that he is responsible for all the acts of his company, nor did he identify any other individual who might instead be responsible. His evidence as a whole reads as if he is in charge of all significant matters at Heritage Audio.

Ms Reid’s substantive argument under this head was that the question whether Mr Arribas is joint tortfeasor with Heritage Audio (on the assumption that Heritage Audio were to be found to be a tortfeasor itself) depended on Spanish law. Mr Arribas gave some evidence about this aspect of Spanish law which I was invited by Ms Reid to accept.

I reject this contention. The question whether one party is jointly liable with another for acts of infringement of trade marks and/or passing off in England can be determined only by reference to English law and the relevant facts. The law has been recently considered by the Supreme Court in Sea Shepherd UK v Fish & Fish Limited [2015] UKSC 10; [2015] A.C. 1229, which I sought to summarise in Vertical Leisure Limited v Poleplus Limited [2015] EWHC 841 (IPEC).

It seems to me that the claimants have established a good arguable case for the alleged joint tortfeasance of Mr Arribas.

The defendants’ application in respect of Mr Arribas succeeds with regard to the claim for infringement of the EU Trade Mark, but is otherwise dismissed.