Court of Justice, Fifth Chamber

27 April 2023, Case C‑104/22

(Lännen MCE Oy v Berky GmbH, Senwatec GmbH & Co. KG.)

Reference for a preliminary ruling – EU trade mark – Regulation (EU) 2017/1001 – Article 125(5) – International jurisdiction – Infringement action – Jurisdiction of the courts of the Member State in which the act of infringement has been committed or threatened – Advertising displayed by a search engine using a national top-level domain name – Advertising not specifying the geographical area of supply – Factors to be taken into account

Article 125(5) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark

must be interpreted as meaning that the proprietor of an EU trade mark who considers that he or she has been prejudiced by the use, without his or her consent, by a third party, of a sign identical with that mark in online advertisements and offers for sale in respect of goods identical with, or similar to, those for which that mark is registered, may bring an infringement action against that third party before an EU trade mark court of the Member State in which consumers and traders targeted by those advertisements or offers for sale are located, notwithstanding the fact that the third party does not expressly and unambiguously list that Member State among the territories to which a supply of the goods in question might be made, if that third party has made use of that sign by means of paid referencing on a search engine website which uses a national top-level domain name of that Member State. By contrast, that is not the case simply because the third party concerned has used the natural referencing of images of its goods on an online photo-sharing service under a generic top-level domain, having recourse to meta tags using the trade mark concerned as a keyword.

categoria:European Case Law