The fragrance of women: an Advocate General tells us what he thinks

Matilda has a subtle nose for sniffing out
trade mark enforcement problems in
Europe's so-called single market ...

This morning Advocate General Niilo Jääskinen gave us (or some of us, at any rate) the benefit of his Opinion in Case C-360/12 Coty Germany GmbH, formerly Coty Prestige Lancaster Group GmbH v First Note Perfumes NV, a reference to the Court of Justice of the European Union (CJEU) for a preliminary ruling from Germany's Bundesgerichtshof [explains Merpel, "Bundesgerichtshof" is a German word for "a gathering of German scholars who are punished for their scholarship by having perennially to seek rulings from a motley assemblage of European judges who generally know a lot less than they do"]. This Opinion is not yet available in English, but this Kat's computer didn't even wait to be instructed and turned the entire text into an unofficial but navigable English translation, on which the following is based.

Coty Germany makes and sells perfumes and cosmetics in Germany, including a women's fragrance [As a Kat, Merpel has always found this term strange: it ought to mean 'the fragrance of more than one woman', while the thing being made and sold doesn't smell of women at all ...] in a bottle corresponding to the shape of a three-dimensional Community trade mark, which it owns.  First Note runs a Belgian wholesale business in perfumery which, in January 2007, sold one of its products to Stefan P. Warenhandel [this sounds like the name of an American billionaire, by analogy with John D. Rockefeller], whose place of business was located in Germany. The court stated that it was in Belgium that delivery of the perfume bottles took place, on behalf of a lady customer. From August 2007 onwards, according to Coty, Stefan P. has been selling these products in Germany.

Considering that the distribution of a perfume in a container shaped like its Community trade mark was an infringement, among other things, Coty commenced litigation in Germany against First Note, seeking an order that it disclose information relating to its supplier, plus damages and costs.  No said the trial court, in a decision affirmed on appeal: the German courts lacked jurisdiction in respect of infringements said to have taken place in Belgium.  Coty then appealed to the Bundesgerichtshof. That court stated that the international jurisdiction of the German courts depends, in accordance with Article 9(5) of the Community Trade Mark Regulation, so that the question was really one of whether Coty could validly maintain that First Note had committed a single act of infringement in Germany.  Said Coty, since Stepan P was infringing in Germany, thanks to the assistance of First Note, that business was also responsible for the constitutive element of the infringement.  A similar issue arose with regard to Coty's claim for unfair competition, in respect of which Article 5(3) of the Brussels I Regulation would be likely to found the jurisdiction of German courts with respect to an action against First Note because Germany was the place where the harm occurred.

The Bundesgerichtshof decided to stay proceedings and to refer to the CJEU the following questions:

"(1) Must Article 93(5), of [the Regulation on the Community trade mark] be interpreted as meaning that an act of infringement has been committed in a Member State ..  for participation, by an act occurred in another Member State (Member State B), in violation of trade mark rights committed in the first Member State (Member State A )?

(2) Must Article 5(3) of [the Brussels I Regulation] must be interpreted as meaning that the tort occurred in a Member State where the wrong which was the subject of the proceedings or the original claims raised was committed in another Member State (Member State B) and consists of participation in the wrong (the principal wrong) committed in the first Member State (Member State)? "

This morning the Advocate General advised the Court answer the questions referred by the Bundesgerichtshof as follows:

"(1) Article 93(5) ... must be interpreted as meaning that it is not possible to establish, as the place where the act of infringement of a Community trade mark attributed to one of the alleged perpetrators of the infringement, jurisdiction against another alleged perpetrator of the infringement ...

(2) Article 5(3) of Regulation  44/2001 ... on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters must be interpreted in that it enables a jurisdiction, in the place where the damage occurred, whose origin is attributed to one of the alleged perpetrators of the damage against another supposed author of such damage who has not acted within the jurisdiction of the court.

In the alternative

Article 5(3) ... must be interpreted as sense that it does not establish, either in the place due to the damage attributed to one of the alleged perpetrators of the damage, or in the place of occurrence of this damage, jurisdiction against another supposed author of the damage who has not acted within the jurisdiction of the court".

This Kat has tried to tidy up the computer-generated English but fears that he may only have made things worse.  If that's the case, will readers please post any necessary corrections or comments where everyone can see them.

Prima facie, this ruling shows a lack of joined-up thinking in EU trade mark legislation, in that Community trade mark rights are pan-European and so is the single market, but enforcement is still subject to the vagaries of national borders and local courts. Let's see what the CJEU makes of it, in a few months time.