Referring court and Member State
Germany, Third Instance, Bundesgerichtshof
Summary
This case concerns the interpretation of Art 93(5) of the Community Trade Mark Regulation and of Art 5(3) of Brussels I. It was referred to the CJEU in proceedings between Coty Germany (a perfumes and cosmetic products producer and distributor established in Germany), and First Note Perfumes (a perfume wholesaler established in Belgium), concerning an alleged infringement of a Community trade mark and of German law against unfair competition. Coty Germany marketed a ladies’ perfume in a coloured bottle with lettering on it reproducing the Community trade mark. First Note, sold perfumes to Stefan P. Warenhandel (having its place of business in Germany) which took delivery of those products in Belgium and subsequently resold them in Germany. Coty Germany brought an action against First Note, claiming that the distribution by First Note of that perfume in a bottle similar to that represented in the trade mark constituted an infringement of a trade mark, unlawful comparative advertising and unfair imitation. That action was dismissed both at first instance and on appeal. It was held on appeal that the German courts had no international jurisdiction. On appeal on a point of law, the referring court referred some questions to the CJEU. The one on Brussels I asked whether, in the event of an allegation of unlawful comparative advertising or unfair imitation of a sign protected by a Community trade mark, prohibited by the law against unfair competition of the Member State in which the court seised is situated, Art 5(3) attributes jurisdiction to hear an action for damages based on the national law against one of the presumed perpetrators who is established in another Member State and is alleged to have committed the infringement in that State. The CJEU first noted that, under Art 14(2) of the Community Trade Mark Regulation, actions concerning a Community trade mark may be brought under the law of Member States relating in particular to civil liability and unfair competition. Thus, it observed that the jurisdiction to hear such actions is not governed by that Regulation but by Brussels I. The CJEU then reaffirmed the principles on Art 5(3) that it had established in C 228/11 Melzer. It distinguished between the place where the causal event occurred and the place where the damage occurred. It accordingly recalled that Art 5(3) does not allow jurisdiction to be established, on the basis of the place of the event giving rise to the damage, to hear an action for damages based on the law on combating unfair competition of the MS in which the court seised is situated against one of the presumed perpetrators of that damage who has not acted within the jurisdiction of the court seised. However, the scope of the question was not limited to the place where the causal event occurred. So the CJEU went on its analysis with the place where the damage occurred and it reached a different conclusion. Citing C 523/10 Wintersteiger and C 170/12 Pinckney, it reaffirmed that regarding damage resulting from infringements of an intellectual and commercial property right, the occurrence of damage in a particular MS is subject to the protection, in that State, of the right in respect of which infringement is alleged. It added that this can also be applied to infringements of unfair competition. It accordingly observed for the present case that 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 MS caused or may cause damage within the jurisdiction of the court seised. The CJEU held that Art 5(3) allows jurisdiction to be established, on the basis of the place of occurrence of damage, to hear an action for damages based on that national law brought against a person established in another MS who is alleged to have committed, in that State, an act which caused or may cause damage within the jurisdiction of that court.