AMS Neve Ltd & Ors v Heritage Audio SL & Anor [2018] EWCA Civ 86
AMS Neve appealed the Judgment of HHJ Hacon ([2016] EWHC 2563 (IPEC)), that the Court of England and Wales had no jurisdiction to hear an EU trade mark infringement action concerning alleged offers for sale and advertising on a website, based on Art. 97(5) (now Art. 125(5) EU Trade Mark Regulation. The decision turned on the meaning of the concept of “the Member State in which the act of infringement has been committed“. It was common ground that the only relevant alleged activity took place in Spain, the place of the Defendant’s domicile, since that was where decisions about the Defendant’s website were made. The CJEU, in Case C-360/12 Coty Germany GmbH v First Note Perfumes NV [2014] ETMR 49, ruled that that concept referred to active conduct by a defendant so “the linking factor … refers to the Member State where the act giving rise to the alleged infringement occurred or may occur, not the Member State where that infringement produces its effects.”
At the Court of Appeal hearing the Claimant alleged that HHJ Hacon’s decision was wrong. The Court of Appeal decided to refer questions to the CJEU, as it doubted that the decision was correct, and because although there was a decision of the Bundesgerichtshof (German Supreme Court) which supported the Defendants’ arguments, and which should be given respect, there was no decision of the CJEU directly on this point in relation to the EU Trade Mark Regulation.
Jacqueline Reid acts for the Defendants