The options of plaintiffs to bring cross-border infringements of EU trade marks or Community Designs before the courts of certain member states of choice have become severely limited by two recent court decisions.

On September 21, 2017 the Court of Justice of the European Union (CJEU) took a decision concerning a special provision in the so-called Rome II regulation, which governs the applicable tort law in cross-border-cases (cases No. C-24/16 and C-25/16 – Nintendo/BigBen). The Court found that an act of infringement (as alleged by the plaintiff), which is committed in various countries (e.g. online sale of goods from country A to country B) shall not be dealt with under the various laws of the countries concerned. Rather, an overall assessment is required to determine where exactly the event giving rise to the damage has occurred. As a consequence, only the laws of one particular member state can be applicable (country A in case of said online sale).

As the same statutory wording is found in the provisions dealing with the international jurisdiction for EU trade marks, some weeks later the German Federal Court of Justice (BGH) inferred from that CJEU ruling that in such cases only the courts of only one member state can be competent, which state is to be determined with the same overall assessment (judgment of 09/11/2017 – I ZR 164/16 – Parfummarken). With this finding, the BGH reversed a decision from the Court of Appeals in Munich which had confirmed its competence for a case in which an Italian seller handed its merchandise to a shipper in Italy for transport to a buyer in Germany. From now on, only Italian courts shall have competence in such cases.

By way of contrast, the BGH confirmed competence of German courts in the same case as far as the claims were based on trade mark rights valid in Germany only, as the special provisions for EU IP rights do not apply to them. It follows that under choice of forum aspects national IP rights might become advantageous over EU IP rights.