The Community trade mark (CTM) Personal Shop was registered for mail order publicity (class 35) and despatch of mail order wares (class 38), and used by way of an online shop, offering (among other items) garments and household goods, which was accessible via the homepage www.personalshop.net.
On the basis of this CTM, the claimant sued the German defendant at a local court for trade mark infringement because of his use of the domain personalshop.de for a website containing links to several competitors of the claimant. The claimant also sought a Europe–wide permanent injunction and a preliminary injunction. The local court was competent to hear national trade mark infringement cases against defendants having their seat or infringing acts committed in its area. The urgent preliminary injunction finally came before the Austrian Supreme Court (OGH).
The OGH had first to rule on the jurisdictional issue on the basis of Articles 92 to 94 of the CTM Regulation. It concluded from these articles that only a CTM court has jurisdiction regarding infringements of CTMs and that this exclusivity is such that it cannot be contracted out by agreement, and that the lack of competence of the local court cannot be overcome, even if all the parties and the court have nevertheless processed the complaint.
Separately from this jurisdiction in the main proceedings, jurisdiction for preliminary injunctions has to be judged. According to Article 99 (1) of the CTM Regulation, the local court also has jurisdiction for provisional measures so that the preliminary case can be processed but not the main proceedings. However, in line with Articles 93 (5) and 94 (2), it has to be concluded from the last sentence of Article 99 (2) ("no other court shall have such (Community–wide) jurisdiction") that the local court can grant its provisional measures only for the territory of Austria. It can order that the website and its links have to have respective effective limitations.
In the case itself it is clear on the basis of quasi-identical signs and identical services that likelihood of confusion is present. However, the defendant has proven an earlier registration date for its domain name but not an earlier use through a website with the respective links. This plea is relevant according to Article 95 (2) CTM–R insofar as it claims that the CTM of the claimant could be declared invalid on account of an earlier right of the defendant. The existence of an earlier right has for domain names to be judged according to Article 8 (4) CTM–R: that is whether according to German law that domain name was acquired earlier and confers on the defendant the right to prohibit the use of a subsequent trade mark. According to the jurisprudence of the German Supreme Court, such a right on the name can result from its use if it becomes apparent that the domain name is not only an address designation but is seen by the consumers as a chosen indication of origin.
The mere registration of the domain name, therefore, under German law does not constitute a prohibition right. Since the actual use of that domain infringes the claimant's right on its CTM, the preliminary injunction restricted to the Austrian territory has been granted.
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| Helmut Sonn |
SONN & PARTNER Patentanwälte
Riemergasse 14
A-1010 Vienna
Austria
Tel: +43 1 512 84 05
Fax: +43 1 512 98 05
office@sonn.at
www.sonn.at
