EUPillar C-523/10 Wintersteiger AG v Products 4U Sondermaschinenbau GmbH (First Chamber)

Summary

This case on Art 5(3) of Brussels I was referred to the CJEU in proceedings between Wintersteiger (established in Austria) and Products 4U (established in Germany) concerning Wintersteiger’s application to prevent Products 4U from using an Austrian trade mark ‘Wintersteiger’ as a keyword on the website of a paid referencing service provider. Wintersteiger manufactured and sold worldwide ski and snowboard servicing tools, together with replacement parts and accessories and owned the Austrian trade mark Wintersteiger. Products 4U developed and sold worldwide ski and snowboard servicing tools and sold accessories for tools made by other manufacturers, in particular Wintersteiger. Those accessories, which Products 4U described as Wintersteiger-Zubehör (‘Wintersteiger accessories’), were neither produced nor authorised by Wintersteiger. Products 4U reserved the keyword Wintersteiger as a Google AdWord only in respect of Google’s German top-level domain, ie, ‘google.de’. The advertisement on google.de did not give any indication that there were no economic links between Wintersteiger and Products 4U. Products 4U did not enter any advertisement linked to the search term ‘Wintersteiger’ in Google’s Austrian top-level domain, ie ‘google.at’. Wintersteiger brought an action for an injunction in Austria claiming that Products 4U’s use of the keyword on google.de infringed its Austrian trade mark and it relied on Art 5(3) of Brussels I in respect of the Austrian courts’ jurisdiction to hear the case. Products 4U contested the Austrian courts’ jurisdiction, and, in the alternative, infringement of the trade mark by arguing that since google.de was directed exclusively at German users, the advertisement was therefore also intended only for German customers. The first instance court held that the Austrian courts did not have jurisdiction because even though ‘google.de’ can be accessed via the internet in Austria, as Google offers its services under country-specific top-level domains the ‘google.de’ website was directed at Germany only. The court of appeal, by contrast, found that it did have international jurisdiction, but held that Wintersteiger had no claim and, for that reason, dismissed its application. Upon an appeal on a point of law, the referring court asked the CJEU under what conditions the advertising by use of the Austrian trade mark Wintersteiger on a website operating under a country-specific top-level domain ‘.de’ may confer jurisdiction on the Austrian courts under Art 5(3) to hear an action for an injunction against the use of an Austrian trade mark. Citing joined cases C-509/09 and C-161/10 eDate Advertising, the CJEU reaffirmed that ‘place where the harmful event occurred or may occur’ in Art 5(3) covers both the place where the damage occurred and the place of the event giving rise to it, so that the defendant may be sued, at the option of the applicant, in the courts for either of those places. As regards the place where the damage occurred, the CJEU stated that it had already held in C-189/08 Zuid-Chemie that it is the place where the event which may give rise to liability in tort, delict or quasi-delict resulted in damage. It then made a distinction between infringement of personality rights and intellectual property rights. Considering the principle of territoriality and its interpretation in joined cases C-236/08 to C-238/08 Google France and C-324/09 L’Oréal, it found that the courts of the MS in which the trade mark is registered have jurisdiction. As regards the place of the event giving rise to the harmful event, it noted that the territorial limitation of the protection of a national mark does not exclude the jurisdiction of courts other than the courts of the MS in which that trade mark is registered. It thus found that the action may be brought before either the courts of the MS in which the trade mark is registered or the courts of the MS of the place of establishment of the advertiser.