International Private Law Issues regarding Trademark Protection and the Internet within the EU 1

• Author: Zuzana Slovákov&aacute
• Position: Senior Lecturer Commercial Law Department Faculty of Law of the Charles University, Prague, the Czech Republic slovakov@prf.cuni.cz
• Pages: 76-83

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1. Introduction

This submission ¹ deals with selected issues in international private law concerning trademark right protection and the Internet in the European Union. ² The establishment of the Internet continues to generate major commercial opportunities in fields including advertising and product offers and services. These lucrative applications of the Internet have been accompanied by a number of intellectual property problems occurring not only in the area of trademark rights protection, but of intellectual property protection more generally. Various disputes have arisen regarding the use of trademarks on the Internet where different entities are the owners of identical or similar trademarks for identical or similar goods or services in different countries. Similarly, disputes have unfolded in cases where one entity's trademark conflicts with an existing domain name, commercial name, or other designation.

Like all intellectual property rights, trademark rights are based on the principle of territoriality. Trademarks are protected in individual states, or, as the case may be, on a regional basis (e.g. as Community trade marks), but never on a global scale. Territorial restrictions on intellectual property rights drove the development of international intellectual property law beginning at the end of the 19th century. These efforts sought to improve the international protection of intellectual property rights. Nevertheless, not even these steps have yet managed to alter the territorially limited nature of intellectual property.

At present, the main source of international law related to industrial property rights, including also trademark rights, is the Paris Convention for the Protection of Industrial Property (the "Paris Convention"). ³According to the Paris Convention, each country of the Paris Convention must grant the nationals of other countries the same protection afforded to its own nationals, i.e. the protection of domestic law (the national legal system), provided that all conditions and formalities imposed upon its own nationals have been observed. ⁴In addition, the Paris Convention prescribes that each country must grant the nationals of all other countries certain minimal rights, irrespective of its own national law, i.e. even where these rights are not extended to its own nationals (iura ex conventione), for example, in the area of priority rights. ⁵ Other effective international treaties on trademarks include the Madrid Agreement Concerning the International Registration of Marks, and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks or the Trademark Law Treaty. ⁶ Nevertheless, the fact remains that with the exception of certain direct rules on the iura ex conventione principle and the status of other countries, no unified substantive law on national trademarks has yet been established among the countries of the above-mentioned international treaties.⁷ This situation can be contrasted somewhat with the regulation of Community trade marks, where the substantive laws set out in Council Regulation (EC) No 40/94 of December 20, 1993 on the Community Trade Mark, are uniform and directly binding throughout the entire territory of the EU.

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These problems cover the determination of both jurisdiction, i.e. the state whose court is entitled to deliver a judgment on the merits and the applicable law as well as various issues in the recognition and enforcement of foreign judgments. International private law decides these matters in most cases on the basis of territorially connecting factors, such as the domicile of a person, the place of registration of an industrial property right, or the place of infringement. Nevertheless, due to the global nature of the Internet, it has become increasingly difficult to apply territorially connecting factors and to determine with reasonable certainty which court will have jurisdiction and which laws will apply. ⁸

2. Jurisdiction

Each state and its legal system is essentially responsible for determining the court with jurisdiction to decide on matters with an international element, even where these issues are also the subject of international treaties. When resolving this question, courts proceed according to their own international private law regulations, which may differ considerably from state to state.

On a European scale, the legal frameworks covering civil court jurisdiction have been unified to some extent over the years. This has occurred primarily through the conclusion of international treaties, including the Brussels Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters, adopted in Brussels on September 27, 1968 (the "Brussels Convention") and the Lugano Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters, adopted in Lugano on September 16, 1988 (the "Lugano Convention").

The Brussels Convention was subsequently adapted for EC member states in the form of Council Regulation (EC) No 44/2001of 22 December, 2000 on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters ⁹ (the "Brussels I Regulation" or the "Regulation").¹⁰ The Lugano Convention, concluded among the member states of the EC and Iceland, Norway and Switzerland, effectively extended the application of the Brussels Convention to these EFTA members, which, as non-EC states, had not been party to the earlier treaty.

In recent years, it has proven necessary to adapt the rules under the Lugano Convention on jurisdiction and judgment recognition and enforcement in civil and commercial matters so that they correspond with the parallel regulation under the Brussels I Regulation. This harmonisation should ensure that court proceedings are handled and directed in the same manner by EC member states and the EFTA states. ¹¹ A new Convention on the Recognition and Enforcement of Judgments in Civil and Commercial Matters ¹² (the "Lugano Convention II") has therefore been signed to replace the Lugano Convention. The application of the Brussels I Regulation will not be influenced by this treaty. ¹³

The relationship between the Brussels I Regulation and the bilateral international conventions and treaty listed in its Article 69 has been resolved so that in any matters addressed by the Regulation, it supersedes these conventions and the treaty. ¹⁴ These conventions and treaty therefore continue to govern any issues not dealt with in the Regulation. The Regulation's relationship with national law is set out in Article 249 paragraph 2 of the Treaty establishing the European Community, ¹⁵ which states that the Regulation shall have general force and will be binding in its entirety and directly applicable in all member states. Any national regulations that conflict with the Regulation are rendered ineffective as a result of its priority. Issues not contemplated by the Regulation are naturally to be assessed from the standpoint of national law.

The Brussels I Regulation unifies the international procedural law valid for EU member states. These rules take priority over the international private law regulations of individual states. Turning to the provisions on determining international jurisdiction, the Brussels I Regulation distinguishes general rules of jurisdiction and cases of exclusive jurisdiction, special jurisdiction, and jurisdiction based on the agreement of the parties. ¹⁶According to the general rules, persons domiciled in a member state shall be sued in the courts of that member state, irrespective of their nationality.¹⁷ For legal persons, the place of domicile is deemed to be the location of their statutory seat, central administration, or principal place of business. ¹⁸ Under the Regulation, persons residing in one member state may be sued in the courts of another member state only if the nature of the disputed matter or the agreement of the parties justifies this measure. ¹⁹ If the defendant is not domiciled in a member state, it is generally a matter of the law of each member state whether its courts have jurisdiction to hear a particular case. ²⁰According to the Brussels I Regulation, courts in the local jurisdiction shall be governed by the laws of their own member state, unless this local court has jurisdiction based on the special jurisdiction rules (see below).

The rules on exclusive jurisdiction in international cases do not apply to litigation on trademark infringement caused by use of the Internet. ²¹ Such Internet-related litigation may, however, be affected by the rules of special jurisdiction, which state that in matters of tort, delict or quasi-delict, persons residing in a member state must be sued in the courts of the place where the harmful event occurred or may occur (Art. 5 (3) of the Brussels I Regulation). According to this provision, these courts have special competence in cases of litigation arising from a tort, delict or quasi-delict. These special jurisdiction rules reflect the principle that persons harmed Page 78 by injurious conduct should not be forced to sue in the place of domicile of the defendant, which might be outside the state where the harmful event occurred. ²² This concept applies solely in these cases of tort, delict or quasi- delict resulting in a harmful event or at least in the possibility of such an event. For this reason, the relevant court jurisdiction is determined as the place of the harmful event. Nevertheless, the availability to the plaintiff of this or any other special jurisdiction rule does not exclude the option of applying the general rules on international jurisdiction, as described above. In these situations, it therefore always remains possible to sue a person in the place of its domicile, and selection of the competent...