One-minute read

Trademark owners in Europe whose rights have been infringed in two or more of the EU’s 27 member states have plenty of choice when it comes to deciding where to enforce their rights. Although the Community trade mark (CTM) gives trademark owners one EU-wide IP right, that right is enforced by individual member states—and each has its own rules and practices on issues such as costs, timing, procedure and remedies. IP owners need to weigh the legal and commercial pros and cons of litigating in some of the EU’s key jurisdictions. Today’s workshop WT50 will look at strategies to consider when enforcing trademark rights in the EU.

For many IP practitioners, forum shopping is a term associated with patents. In the US, plaintiffs often choose to have their patent disputes heard by the decidedly property owner-friendly juries of the Eastern District of Texas, while in Europe litigants frequently consider asking the UK’s notoriously sceptical patent judges to declare their rivals’ IP rights invalid.

But trademark owners in Europe are increasingly aware of the advantages of doing some forum shopping of their own. The EU—with its single economic market on the one hand, and its system of national enforcement of Europe-wide Community trade marks (CTMs) on the other—makes an ideal supermarket for IP litigants looking for a bargain when it comes to protecting their rights in court.

But that means that IP owners who believe that their CTM has been infringed in more than one EU member state have to spend time weighing the pros and cons of litigating in one country over another. To do so, they need to take into account a range of legal—and commercial—factors when deciding where to file their lawsuit.

Rules on venue

The rules that govern the CTM set out a cascading list of venues where plaintiffs should bring their disputes (see box). Put simply, these rules say that proceedings should be brought in the member state in which the defendant is domiciled; if not, in the member state in which he has an establishment; if not, in the member state in which the plaintiff is domiciled; if not, in which he has an establishment; or, if not, in Spain, where OHIM in based.

Although the Regulation also allows litigants to reserve their right to bring an action in any member state where the infringement has taken place, plaintiffs will only be able to benefit from relief that covers the whole of the EU, rather than just the member state in which they brought the case, if they follow the Regulation’s strict rules on cascading jurisdiction.

That can be an important consideration, says Morag Macdonald, a partner with Bird & Bird in London: “If you follow the rules, you can get relief for the whole of the EU. I think that there are many people who don’t appreciate just how powerful that is. Say that you are launching a new product and you discover a lookalike version, you can get an injunction and damages to cover all of the markets in the EU where you do business. You can stop your rival in every EU country at one stroke, and you can get damages on all of the products that they have already sold across the whole of the EU.”