27 April 2023 (*1)

27 April 2023 (*1)

(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)

(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)

In Case C‑104/22,

In Case C‑104/22,

REQUEST for a preliminary ruling under Article 267 TFEU from the markkinaoikeus (Market Court, Finland), made by decision of 14 February 2022, received at the Court on 15 February 2022, in the proceedings

REQUEST for a preliminary ruling under Article 267 TFEU from the markkinaoikeus (Market Court, Finland), made by decision of 14 February 2022, received at the Court on 15 February 2022, in the proceedings

Berky GmbH,

Berky GmbH,

THE COURT (Fifth Chamber),

THE COURT (Fifth Chamber),

composed of E. Regan, President of the Chamber, D. Gratsias, M. Ilešič (Rapporteur), I. Jarukaitis and Z. Csehi, Judges,

composed of E. Regan, President of the Chamber, D. Gratsias, M. Ilešič (Rapporteur), I. Jarukaitis and Z. Csehi, Judges,

Advocate General: M. Campos Sánchez-Bordona,

Advocate General: M. Campos Sánchez-Bordona,

Registrar: A. Calot Escobar,

Registrar: A. Calot Escobar,

having regard to the written procedure,

having regard to the written procedure,

after considering the observations submitted on behalf of:

after considering the observations submitted on behalf of:

–Lännen MCE Oy, by E. Hodge and K. Tommila, asianajajat,

–Lännen MCE Oy, by E. Hodge and K. Tommila, asianajajat,

–the European Commission, by P. Němečková, S. Noë, J. Ringborg and J. Samnadda, acting as Agents,

–the European Commission, by P. Němečková, S. Noë, J. Ringborg and J. Samnadda, acting as Agents,

having decided, after hearing the Advocate General, to proceed to judgment without an Opinion,

having decided, after hearing the Advocate General, to proceed to judgment without an Opinion,

gives the following

gives the following

1This request for a preliminary ruling concerns the interpretation of 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 (OJ 2017 L 154, p. 1).

1This request for a preliminary ruling concerns the interpretation of 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 (OJ 2017 L 154, p. 1).

2The request has been made in proceedings between, of the one part, Lännen MCE Oy (‘Lännen’) and, of the other part, the companies Berky GmbH and Senwatec GmbH & Co. KG. which are part of the same group of undertakings, concerning the alleged infringement of the EU trade mark WATERMASTER of which Lännen is the proprietor.

2The request has been made in proceedings between, of the one part, Lännen MCE Oy (‘Lännen’) and, of the other part, the companies Berky GmbH and Senwatec GmbH & Co. KG. which are part of the same group of undertakings, concerning the alleged infringement of the EU trade mark WATERMASTER of which Lännen is the proprietor.

Legal context

Legal context

Regulation 2017/1001

Regulation 2017/1001

3Article 122 of Regulation 2017/1001, entitled ‘Application of Union rules on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters’, provides in paragraph 2 thereof:

3Article 122 of Regulation 2017/1001, entitled ‘Application of Union rules on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters’, provides in paragraph 2 thereof:

‘In the case of proceedings in respect of the actions and claims referred to in Article 124:

‘In the case of proceedings in respect of the actions and claims referred to in Article 124:

(a)Articles 4 and 6, points 1, 2, 3 and 5 of Article 7 and Article 35 of Regulation (EU) No 1215/2012 [of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (OJ 2012 L 351, p. 1)] shall not apply;

(a)Articles 4 and 6, points 1, 2, 3 and 5 of Article 7 and Article 35 of Regulation (EU) No 1215/2012 [of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (OJ 2012 L 351, p. 1)] shall not apply;

…’

…’

4Article 123 of Regulation 2017/1001, entitled ‘EU trade mark courts’, provides in paragraph 1 thereof:

4Article 123 of Regulation 2017/1001, entitled ‘EU trade mark courts’, provides in paragraph 1 thereof:

‘The Member States shall designate in their territories as limited a number as possible of national courts and tribunals of first and second instance, which shall perform the functions assigned to them by this Regulation.’

‘The Member States shall designate in their territories as limited a number as possible of national courts and tribunals of first and second instance, which shall perform the functions assigned to them by this Regulation.’

5Article 124 of that regulation, entitled ‘Jurisdiction over infringement and validity’, provides:

5Article 124 of that regulation, entitled ‘Jurisdiction over infringement and validity’, provides:

‘The EU trade mark courts shall have exclusive jurisdiction:

‘The EU trade mark courts shall have exclusive jurisdiction:

(a)for all infringement actions and – if they are permitted under national law – actions in respect of threatened infringement relating to EU trade marks;

(a)for all infringement actions and – if they are permitted under national law – actions in respect of threatened infringement relating to EU trade marks;

(b)for actions for declaration of non-infringement, if they are permitted under national law;

(b)for actions for declaration of non-infringement, if they are permitted under national law;

(c)for all actions brought as a result of acts referred to in Article 11(2);

(c)for all actions brought as a result of acts referred to in Article 11(2);

(d)for counterclaims for revocation or for a declaration of invalidity of the EU trade mark pursuant to Article 128.’

(d)for counterclaims for revocation or for a declaration of invalidity of the EU trade mark pursuant to Article 128.’

6Article 125 of Regulation 2017/1001, entitled ‘Counterclaims’, states:

6Article 125 of Regulation 2017/1001, entitled ‘Counterclaims’, states:

‘1. Subject to the provisions of this Regulation as well as to any provisions of Regulation (EU) No 1215/2012 applicable by virtue of Article 122, proceedings in respect of the actions and claims referred to in Article 124 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment.

‘1. Subject to the provisions of this Regulation as well as to any provisions of Regulation (EU) No 1215/2012 applicable by virtue of Article 122, proceedings in respect of the actions and claims referred to in Article 124 shall be brought in the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment.

…

…

7Article 126 of Regulation 2017/1001, entitled ‘Extent of jurisdiction’, provides:

7Article 126 of Regulation 2017/1001, entitled ‘Extent of jurisdiction’, provides:

‘1. An EU trade mark court whose jurisdiction is based on Article 125(1) to (4) shall have jurisdiction in respect of:

‘1. An EU trade mark court whose jurisdiction is based on Article 125(1) to (4) shall have jurisdiction in respect of:

(a)acts of infringement committed or threatened within the territory of any of the Member States;

(a)acts of infringement committed or threatened within the territory of any of the Member States;

(b)acts referred to in Article 11(2) committed within the territory of any of the Member States.

(b)acts referred to in Article 11(2) committed within the territory of any of the Member States.

Regulation No 1215/2012

Regulation No 1215/2012

8Article 17(1) of Regulation No 1215/2012 provides:

8Article 17(1) of Regulation No 1215/2012 provides:

‘In matters relating to a contract concluded by a person, the consumer, for a purpose which can be regarded as being outside his trade or profession, jurisdiction shall be determined by this Section, without prejudice to Article 6 and point 5 of Article 7, if:

‘In matters relating to a contract concluded by a person, the consumer, for a purpose which can be regarded as being outside his trade or profession, jurisdiction shall be determined by this Section, without prejudice to Article 6 and point 5 of Article 7, if:

…

…

(c)in all other cases, the contract has been concluded with a person who pursues commercial or professional activities in the Member State of the consumer’s domicile or, by any means, directs such activities to that Member State or to several States including that Member State, and the contract falls within the scope of such activities.’

(c)in all other cases, the contract has been concluded with a person who pursues commercial or professional activities in the Member State of the consumer’s domicile or, by any means, directs such activities to that Member State or to several States including that Member State, and the contract falls within the scope of such activities.’

9Article 66(1) of that regulation states:

9Article 66(1) of that regulation states:

‘This Regulation shall apply only to legal proceedings instituted, to authentic instruments formally drawn up or registered and to court settlements approved or concluded on or after 10 January 2015.’

‘This Regulation shall apply only to legal proceedings instituted, to authentic instruments formally drawn up or registered and to court settlements approved or concluded on or after 10 January 2015.’

The dispute in the main proceedings and the questions referred for a preliminary ruling

The dispute in the main proceedings and the questions referred for a preliminary ruling

10Lännen, a company established in Finland, manufactures, inter alia, amphibious dredgers which it markets under the EU trade mark WATERMASTER, registered on 12 July 2004 under number 003185758.

10Lännen, a company established in Finland, manufactures, inter alia, amphibious dredgers which it markets under the EU trade mark WATERMASTER, registered on 12 July 2004 under number 003185758.

11On 28 January 2020, that company brought an infringement action before the markkinaoikeus (Market Court, Finland) against Berky and Senwatec, two companies established in Germany and belonging to the same group of undertakings.

11On 28 January 2020, that company brought an infringement action before the markkinaoikeus (Market Court, Finland) against Berky and Senwatec, two companies established in Germany and belonging to the same group of undertakings.

12Lännen complains that Senwatec committed an act of infringement in Finland, by using paid referencing, in an internet search engine operating under the national top-level domain for that Member State; accordingly, if the term ‘Watermaster’ was searched for, an advertisement for Senwatec’s products was displayed on that search engine’s website. Thus, in August 2016, when the term ‘Watermaster’ was searched for in Finland on the website www.google.fi the first result displayed was a Google Adwords advertisement for Senwatec’s products, separated from the other search results by a line and containing the word ‘Ad’.

12Lännen complains that Senwatec committed an act of infringement in Finland, by using paid referencing, in an internet search engine operating under the national top-level domain for that Member State; accordingly, if the term ‘Watermaster’ was searched for, an advertisement for Senwatec’s products was displayed on that search engine’s website. Thus, in August 2016, when the term ‘Watermaster’ was searched for in Finland on the website www.google.fi the first result displayed was a Google Adwords advertisement for Senwatec’s products, separated from the other search results by a line and containing the word ‘Ad’.

13The national court notes that neither the advertising link obtained by that search nor the associated text contained any elements specifically referring to Finland or the geographical area where the products were to be supplied. However, the referring court states that Senwatec’s website to which that advertising link led contained, inter alia, a text in English indicating that Senwatec’s products are used worldwide and a world map on which the countries in which Senwatec claimed to be active were highlighted in darker colours. Finland did not form part of those countries.

13The national court notes that neither the advertising link obtained by that search nor the associated text contained any elements specifically referring to Finland or the geographical area where the products were to be supplied. However, the referring court states that Senwatec’s website to which that advertising link led contained, inter alia, a text in English indicating that Senwatec’s products are used worldwide and a world map on which the countries in which Senwatec claimed to be active were highlighted in darker colours. Finland did not form part of those countries.

14Lännen complains that Berky infringed its trade mark by using, in the period from 2005 to 2019, the natural referencing of images, freely accessible on the photo-sharing website Flickr.com, of Berky’s machines, by means of a meta tag containing the keyword ‘Watermaster’, which was intended to enable internet search engines to identify those images better. Thus, a search in Finland on www.google.fi using the term ‘Watermaster’ produced a link to a page showing images of Berky machines.

14Lännen complains that Berky infringed its trade mark by using, in the period from 2005 to 2019, the natural referencing of images, freely accessible on the photo-sharing website Flickr.com, of Berky’s machines, by means of a meta tag containing the keyword ‘Watermaster’, which was intended to enable internet search engines to identify those images better. Thus, a search in Finland on www.google.fi using the term ‘Watermaster’ produced a link to a page showing images of Berky machines.

15The referring court points out that the link displayed as a search result was not an advertising link, but an ‘organic’ search result. The captions for the images on the Flickr.com service included the names of the machines in English and, in addition, their model numbers. Berky’s logo also appeared in connection with the images. Each image was accompanied by several meta tags consisting in keywords in English and other languages, in particular the term ‘Watermaster’.

15The referring court points out that the link displayed as a search result was not an advertising link, but an ‘organic’ search result. The captions for the images on the Flickr.com service included the names of the machines in English and, in addition, their model numbers. Berky’s logo also appeared in connection with the images. Each image was accompanied by several meta tags consisting in keywords in English and other languages, in particular the term ‘Watermaster’.

16According to Lännen, Berky and Senwatec carried out marketing activities on the internet that were directed at the territory of Finland and were visible to consumers or traders in that Member State. It submits that Senwatec’s and Berky’s products are sold throughout the world. In Lännen’s view, the advertising at issue, which is in English, is addressed to an international public, and is aimed at every country in which it is visible.

16According to Lännen, Berky and Senwatec carried out marketing activities on the internet that were directed at the territory of Finland and were visible to consumers or traders in that Member State. It submits that Senwatec’s and Berky’s products are sold throughout the world. In Lännen’s view, the advertising at issue, which is in English, is addressed to an international public, and is aimed at every country in which it is visible.

17In their defence, Berky and Senwatec challenge the jurisdiction of the referring court, on the ground that the alleged acts of infringements were not committed in Finland.

17In their defence, Berky and Senwatec challenge the jurisdiction of the referring court, on the ground that the alleged acts of infringements were not committed in Finland.

18They maintain that their marketing activities were not targeted at Finland, a Member State where they do not offer their products for sale and on whose market they are not present. Neither the search result on www.google.fi nor the use of a meta tag using the keyword ‘Watermaster’ would establish that their activities targeted Finland. Thus, in order to establish the jurisdiction of the referring court, the decisive factor is not whether the allegedly illegal content is visible online in Finland, but rather whether that content has a relevant connecting factor with that Member State.

18They maintain that their marketing activities were not targeted at Finland, a Member State where they do not offer their products for sale and on whose market they are not present. Neither the search result on www.google.fi nor the use of a meta tag using the keyword ‘Watermaster’ would establish that their activities targeted Finland. Thus, in order to establish the jurisdiction of the referring court, the decisive factor is not whether the allegedly illegal content is visible online in Finland, but rather whether that content has a relevant connecting factor with that Member State.

19The referring court states that the parties disagree as to whether the map depicted on Senwatec’s website shows that the area of supply of Senwatec’s products is limited to a geographical area from which Finland appears to be excluded. According to Senwatec, the map is evidence that Finland is not part of the market area for the company’s products whereas, according to Lännen, the market for Senwatec’s products is global and extends beyond the areas covered by that map.

19The referring court states that the parties disagree as to whether the map depicted on Senwatec’s website shows that the area of supply of Senwatec’s products is limited to a geographical area from which Finland appears to be excluded. According to Senwatec, the map is evidence that Finland is not part of the market area for the company’s products whereas, according to Lännen, the market for Senwatec’s products is global and extends beyond the areas covered by that map.

20The referring court considers, in the context of ascertaining the jurisdiction of a court seised on the basis of the place where the act of infringement was committed, that it is appropriate, in order to determine the territories of the Member States in which the consumers or traders, to whom advertising posted on a website is directed, are situated, to take account, in particular, of the geographical areas where the products concerned are to be supplied.

20The referring court considers, in the context of ascertaining the jurisdiction of a court seised on the basis of the place where the act of infringement was committed, that it is appropriate, in order to determine the territories of the Member States in which the consumers or traders, to whom advertising posted on a website is directed, are situated, to take account, in particular, of the geographical areas where the products concerned are to be supplied.

21That court nevertheless considers that other factors might prove relevant for the purposes of such a verification, as is apparent from the Opinion of Advocate General Szpunar in AMS Neve and Others (C‑172/18, EU:C:2019:276), without it being clear what those other factors might be, since the Court has not ruled on that point.

21That court nevertheless considers that other factors might prove relevant for the purposes of such a verification, as is apparent from the Opinion of Advocate General Szpunar in AMS Neve and Others (C‑172/18, EU:C:2019:276), without it being clear what those other factors might be, since the Court has not ruled on that point.

—