Protecting trademark from internet abuse

Court of Justice of the European Union

Published July 31, 2012

Wintersteiger AG v Products 4U Sondermaschinenbau GmbH

(Case C-523/10)

Before A. Tizzano, President of Chamber, and Judges M. Safjan (Rapporteur), A. Borg Barthet, E. Levits and J.-J. Kasel

Judgment April 19, 2012

An action relating to infringement of a trademark registered in one member state because of the use, by an advertiser, of a keyword identical to that trademark on a search engine website operating under a country-specific top-level domain of another member state could be brought before the courts of either member state.

The Court of Justice of the European Union (First Chamber) so ruled on a reference for a preliminary ruling from the Oberster Gerichtshof, Austria, under article 267 of the Treaty on Functioning of the European Union in proceedings between the claimant, Wintersteiger AG, established in Austria, and the defendant, Products 4U Sondermaschinenbau GmbH, established in Germany, concerning the claimant’s application to prevent the defendant from using the Austrian trademark “Wintersteiger” as a keyword on the website of a paid referencing service provider.

THE COURT ruled that contrary to the situation of a person who considered that there had been an infringement of his personality rights, which were protected in all member states, the protection afforded by the registration of a national mark was, in principle, limited to the territory of the member state in which it was registered, so that, in general, its proprietor could not rely on that protection outside the territory.

Nevertheless, the question whether the use, for advertising, of a sign identical to a national mark on a website operating solely under a country-specific top-level domain different from that of the member state in which the trademark was registered in fact infringed that mark fell within the scope of the examination of the substance of the action that the court having jurisdiction would undertake in light of the applicable substantive law.

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 had to be considered that both the objective of foreseeability and that of sound administration of justice militated in favour of conferring jurisdiction, in respect of the damage incurred, on the courts of the member state in which the right at issue was protected.

Regarding the place where the event occurred which gave rise to an alleged infringement of a national mark, it had to be noted that the territorial limitation of the protection of a national mark was not such as to exclude the international jurisdiction of courts other than the courts of the member state in which that trademark was registered.

Accordingly, article 5(3) of Council Regulation (EC) No 44/2001 of December 22, 2000, on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, meant that an action relating to infringement of a trademark registered in a member state because of the use, by an advertiser, of a keyword identical to that trademark on a search engine website operating under a country-specific top-level domain of another member state could be brought before either the courts of the member state in which the trademark was registered or the courts of the member state of the place of establishment of the advertiser.