Internet Abuse of Registered Trademark

AutorMargit Gaffal
Páginas563-566

Page 563

JUDGEMENT: JUDGMENT OF THE COURT (FIRST CHAMBER) OF 19 APRIL 2012. WINTERSTEIGER AG V PRODUCTS 4U

SONDERMASCHINENBAU GMBH WWW.CURIA.EU

Introduction: The Internet has revolutionized the possibilities of human communication and has increased the opportunities for global trade and commerce. As the internet is, however, in many aspects legally unregulated its users are exposed to certain risks and pitfalls, especially in the field of intellectual property.

On 19 April 2012 the Court of Justice of the European Union (First Chamber) rendered a significant judgment (Case C-523/10) dealing with infringement of a registered trademark in the internet. In this judgment the Court makes reference to both, Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters [Council Regulation (EC) No 44/2001 see on: eur-lex.europa.eu.] and trade-related intellectual property rights. Referring a preliminary decision of 5 October 2010 the Austrian Supreme Court (Oberster Gerichtshof) asked the Court of Justice for an interpretation of EC law according to Article 267 TFEU [See: Article 267 TFEU (Treaty on Functioning of the European Union)] The Advocate General summarizes the problem as follows:

The present case provides the Court with the opportunity to resolve a question concerning both the interpretation of Article 5(3) of Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, which establishes jurisdiction for hearing claims for damages arising from non-contractual liability, and intellectual property law. In short, it is necessary to strike a balance between the difficulties raised by the national territorial nature of a trade mark and the potentially ubiquitous nature of an infringement committed in another Member State via the internet

(Cruz Villalón, 16 February 2012).

1. The Facts: The dispute arose because a German company used a trademark that had earlier been registered by an Austrian company as its trademark name. Claimant is the Austrian company Wintersteiger AG that, among other activities, manufactures and sells ski and snowboard servicing tools and its accessories and spare parts. It was founded in 1953 and had its company name registered as its official trademark in 1993. The defendant, the German company Products 4U Sondermaschinenbau GMBH operates in the same sector, selling ski and snowboard servicing tools, spare parts and accessories. Additionally it sells replacement parts for tools made by other manufacturers, some of which also produce for Wintersteiger. Products 4U called these replacement parts «Wintersteiger accessories» although they are neither produced nor authorized by Wintersteiger. Both companies operate on a worldwide basis, compete in the same sector and have no links.

In December 2008 Products 4U decided to advertise its products on the internet using the advertising system offered by the service provider Google. For...

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