Speaking at "Sign of the Times", this year's Annual MARQUES Conference, Guido Baumgartner (Coty Germany GmbH) opened today's afternoon session by observing that, while fake products can benefit from mass production, there is no convenient form of mass protection when infringing goods are sold online.  Take-down of offending sites is all very well, but it doesn't do anything to address the continued existence of the infringing goods themselves.  

Guido took the enthralled audience through four recent German judicial decisions that have gone some way towards redressing the balance, utilising the principle that legal action can be taken against a "disturber", whose activities facilitate the sale of fakes -- a far more efficacious option than trying to sue direct infringers who are known only by false names or nicknames and whose physical location is also unknown.  On the downside, it has to be said that the cases Guido mentioned were all the result of considerable effort and ingenuity on the part of the trade mark owner: not all IP owners and victims of online sales of fakes have the patience, the resources and the acumen to solve the problems which e-sales pose.

Guido was followed by Alex von Muehlendahl (Bardehle), who reviewed the scope of trade mark law across the grand mosaic of different laws which is the European Union, looking beyond it to laws that deal with contributory tortfeasors and those who otherwise assist in infringements -- particularly multistate ones.  He stressed the importance of establishing the correct law under which to sue and the right jurisdiction in which to do so. Having done this, it is necessary to pin specific allegedly infringing acts to the country or countries in which they occurred.  

Alex then touched on preliminary relief. under Article 103 of the Community Trade Mark Regulation a Community Trade Mark Court can order pan-European preliminary relief; the IP Enforcement Directive goes a good deal further, adding a list of remedies which include the disclosure of information, preservation of goods pending claims, destruction and more besides.  

The third speaker in this session, Philippe Peters (NautaDutilh), who took a close look at Article 5 of Council Regulation 44/2001 (the Brussels Regulation), which gives jurisdiction to the courts of the place where the harmful event occurred, or may occur, and its relationship to Articles 2 and 6. The Shevill rule (Case 68/93) allows the claimant to bring an action either in the jurisdiction where the defendant is domiciled (in which case damages can be recovered in respect of all jurisdictions in which the harm was suffered), or where the damage takes place (in which case it is limited to damages in that state).  The case was considered in eDate, where the Court of Justice concluded that, in the operation of the Shevill rule, the mere fact that a website was accessible to a jurisdiction did not mean that a wrong was committed there unless the website was aimed at that country.

Philippe then took the audience through the Court of Justice ruling in Case C-523/10 Wintersteiger. In that case the court held that an action relating to infringement of a trade mark registered in a Member State because of the use, by an advertiser, of a keyword identical to that trade mark on a search engine website operating under a country-specific top-level domain of another Member State may be brought before either the courts of the Member State in which the trade mark is registered or the courts of the Member State of the place of establishment of the advertiser.  On the facts of that case, Wintersteiger could thus have commenced proceedings both in Austria and in Germany.

 Concluding his presentation, Philippe turned to a recent patent case before the Court of Justice, Case C-616/10 Solvay.  There, in an action for patent infringement against several national companies within the same group, where a defence of invalidity was raised. There was a danger that different national courts, applying the same law to the same facts, might reach quite different results -- something which should be taken into account and ideally avoided when vesting transnational jurisdiction on a court.  As a matter of law, only the national court can deal with the validity of a registered IP right granted within its jurisdiction -- but Solvay established that this did not affect actions for preliminary relief since they do not affect the validity of the right concerned.