Online infringement and court competence

AMS Neve manufactures and sells audio equipment in the United Kingdom. The trademark 1073 is registered in the European Union for recording equipment in class 9. AMS Neve files a lawsuit in England against Heritage Audio from Spain, for selling counterfeit equipment under the mark 1073. As proof, twitter messages and e-mails directed at English consumers are submitted.

Heritage Studio states that the claim should be rejected. Heritage Studio is based in Spain and the company does not advertise in England. Standard rule for (online) infringement cases is to start proceedings in the country where the company is located, advertises or offers items for sale and where the follow-up actions take place. In addition, the court is competent in the country where the infringement takes place.

The European Court has now ruled that the place where the infringement takes place also includes the country in which the target audience lives, on which the advertisement is focused, even if the infringing advertisement is sent from another country. So this is good news for holders of an EU trademark, because based on this ruling, proceedings can be diverted to a court in any other EU country.


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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?