Judges D Gratsias, M Ilešič (Rapporteur), I Jarukaitis, Z Csehi
Advocate General M Campos Sánchez-Bordona
The claimant, a company in Finland that manufactured construction machinery, was the proprietor of the registered European Union trade mark “Watermaster” for its specialised dredging machine. The proprietor brought an infringement action before the Finnish EU trade mark court against the defendants, two German companies belonging to the same group, which manufactured a similar machine. It complained that the second defendant had committed an act of infringement in Finland by buying the top-level domain in the Finnish version of a popular internet search engine (“paid referencing”), so that if a user searched for “Watermaster”, the first result was an advertisement for the defendant’s products. Neither the advertising link nor the associated text contained any elements referring to Finland and the geographical areas to which the products could be delivered were not mentioned. The proprietor also complained that the first defendant had infringed its mark by using stock reference images of its own machines, freely accessible on a photo-sharing website (“natural referencing”), by means of a meta tag containing the keyword “Watermaster”. Thus, a search in Finland using that word produced a link to a page showing images of the first defendant’s machines. According to the proprietor, the defendants marketed their products on the internet directly towards consumers and traders in Finland. The defendants challenged the jurisdiction of the Finnish court on the ground that the alleged acts of infringement were not committed in Finland, as required by article 125(5) of Parliament and Council Regulation 2017/1001. In those circumstances the Finnish court stayed the proceedings and referred to the Court of Justice of the European Union for a preliminary ruling the question, in essence, whether article 125(5) of Regulation 2017/1001 meant that the proprietor of an EU trade mark, who considered that a third party had used an identical sign in online advertisements and offers for sale in respect of similar goods to those for which the mark was registered, could bring an infringement action against that third party a before an EU trade mark court of the member state in which consumers and traders targeted by those advertisements or offers for sale were located, notwithstanding the fact that the third party did not list that member state among the countries which it supplied its goods.
On the reference—
Held, since the trade mark proprietor had brought the proceedings before the EU trade mark court of the place where the alleged acts of infringement had been committed, pursuant to article 125(5) of Regulation 2017/1001, rather than before the court of the defendants’ domicile under article 125(1), the proceedings were restricted to acts committed or threatened within a single member state, namely Finland. Therefore, it was necessary to show evidence giving rise to a reasonable presumption that there was a sufficient connecting factor between the alleged acts and Finland. Details of the geographic areas of supply of the products in question were particularly important when making that assessment. Since, in the present case, there was an absence of information as to the geographical areas where the defendants’ products could be delivered, the connecting factor with Finland had to be established in the light of other information. The fact that an undertaking had paid for a national top-level domain of a member state other than that in which it was established (paid referencing), in order to display a link to its website for the public in that member state, constituted a sufficient connecting factor. However, the use of a registered mark as a meta tag on an online photo-sharing service under a generic top-level domain (natural referencing) was different in that it was not intended for any specific member state and the meta tag was intended only to make it easier for search engines to identify the images on a website. It followed that the Finnish court did not have jurisdiction on the basis of article 125(5) of the Regulation in the absence of other matters capable of proving that such natural referencing was intended for the Finnish public. Accordingly, article 125(5) of Regulation 2017/1001 meant that the proprietor of an EU trade mark could bring infringement proceedings in the member state in which consumers and traders targeted by a third party’s advertisements or offers of sale were located, if the third party had used the mark by means of paid referencing on a search engine website which used a national top-level domain name of that member state. By contrast, that was not the case simply where the third party had used the natural referencing of images of its goods under a generic top-level domain, having recourse to meta tags using the mark as a keyword (judgment, paras 30, 33, 36, 39, 42, 44, 49–54, operative part).
E Hodge and K Tommila for the trade mark proprietor.
P Eskola for the defendants.
P Němečková, S Noë, J Ringborg and J Samnadda, agents, for the European Commission.