OPINION OF ADVOCATE GENERAL
JÄÄSKINEN
delivered on 21 November 2013 (1)
Case C‑360/12
Coty Germany GmbH, formerly Coty Prestige Lancaster Group GmbH,
v
First Note Perfumes NV
(Request for a preliminary ruling from the Bundesgerichtshof (Germany))
(International jurisdiction in civil matters — Regulation (EC) No 40/94 — Article 93(5) — Jurisdiction in matters relating to infringement of a Community trade mark — Regulation (EC) No 44/2001 — Article 5(3) — Special jurisdiction in tort or delict — Act committed by the defendant in another Member State which constitutes assistance in the act of infringement or tortious act committed in the Member State in which the court seised has its seat)
I – Introduction
1. In its request for a preliminary ruling the Bundesgerichtshof (Federal Court of Justice) (Germany) calls upon the Court to rule as to whether the sole fact that purportedly unlawful acts committed by a third party are attributed to a defendant who is said to have participated indirectly in that act in another Member State, as though he had himself acted within the jurisdiction of the court seised, can be taken as the basis for the international jurisdiction of a court of a Member State.
2. This issue is raised, first, from an entirely novel perspective, in connection with the interpretation of the rule of jurisdiction laid down in Article 93(5) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, (2) with regard to the defendant’s purported indirect assistance in acts of infringement committed by a third party.
3. Inasmuch as it concerns, secondly, Article 5(3) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, (3) this reference for a preliminary ruling follows the general trend of a number of recent cases concerned with whether the tortious acts of a third party might be a valid connecting factor, for the purpose of establishing that the ground of jurisdiction laid down by that provision is present. (4) Analysis of this aspect of the case reveals a disparity between two lines of case-law, one advocating a less broad interpretation of that provision than the other, of which the Court will have to be mindful.
4. Furthermore, the two questions raised by the referring court overlap, since the first seeks, inter alia, to establish the extent to which, provided that an extension of jurisdiction such as that envisaged is allowed under Article 5(3) of the Brussels I Regulation, that interpretation could be transposed onto Article 93(5) of the Community Trade Mark Regulation. The links which may exist between those two regulations will, therefore, also have to be investigated.
5. In specific terms, this reference for a preliminary ruling follows the action brought before a German court by a German company against a Belgian company on the ground that the latter company had participated in an infringement of the Community trade mark from which the former company derives rights and had assisted in acts of unfair competition against it. Against that background, the Court is asked whether the jurisdiction of the German courts can be founded on the fact that the defendant, which acted in Belgium, is purported to have assisted in the execution of the unlawful acts committed in Germany by a German trader which, for its part, was not being sued.
II – The main proceedings, the questions referred for a preliminary ruling and the procedure before the Court
6. Coty Germany GmbH (5) (‘Coty Germany’) produces and distributes perfumes and cosmetic products in Germany. It markets, in particular, a ladies’ perfume in a bottle based on a three-dimensional Community trade mark, the rights for which it has held since its registration.
7. First Note Perfumes NV (‘First Note Perfumes’) operates, in Belgium, as a perfume wholesaler. In January 2007, it sold one of the products from its catalogue to Stefan P. Warenhandel (‘Stefan P.’), whose place of business was in Germany. The referring court states that the bottles of women’s perfume that had been ordered were delivered in Belgium. Subsequently, in August 2007, according to Coty Germany, Stefan P. resold those products in Germany.
8. Taking the view that the marketing of a perfume in a bottle similar to the Community trade mark from which it derives rights constituted an infringement, unlawful comparative advertising and unfair imitation, Coty Germany brought an action before a German court against First Note Perfumes (6) only, in which it claimed that the defendant be ordered, first, to provide information on its supplier, secondly, to indemnify the applicant for all damage which had arisen or would yet arise from the marketing of that product in Germany, and to reimburse to it the costs borne in the pre-litigation procedure.
9. Since the rejection of those claims at first instance was upheld on appeal, on the ground that the German courts have no international jurisdiction, Coty Germany brought an appeal on a point of law before the Bundesgerichtshof. It relied on infringement of the Community trade mark concerned and the use of practices which constitute unfair competition.
10. Concerning the Community trade mark, the Bundesgerichtshof states that the international jurisdiction of the German courts depends, in accordance with Article 93(5) of the Community Trade Mark Regulation, (7) on whether Coty Germany legitimately asserted that the sole defendant had committed an act of infringement in Germany.
11. First Note Perfumes can have been a participant in such an act in Germany only by virtue of the sale, in Belgium, of the bottles of perfume at issue to Stefan P., which is alleged to have subsequently committed, in Germany, a trade mark infringement for the purposes of Article 9(1)(b) of that regulation. (8) In this regard, Coty Germany maintained that First Note Perfumes had assisted in the purported infringement of its rights in Germany: given that the defendant was not unaware of its German customer’s intention to resell in Germany the products it had purchased in Belgium, it had thus assisted in it and, therefore, was also responsible for bringing about the element constituting the infringement.
12. Furthermore, according to Coty Germany’s claims alleging infringement of German law on unfair competition, (9) Article 5(3) of the Brussels I Regulation (10) is also capable of establishing the jurisdiction of the German courts with regard to the action brought against First Note Perfumes on the basis of the place where the harmful event occurred. The questions referred by the Bundesgerichtshof with regard to the Community Trade Mark Regulation will, therefore, also arise mutatis mutandis in this context.
13. By decision lodged on 31 July 2012, the Bundesgerichtshof decided to stay the proceedings before it and to refer the following questions to the Court for a preliminary ruling:
‘1. Is Article 93(5) of [the Community Trade Mark Regulation] to be interpreted as meaning that an act of infringement is committed in one Member State (Member State A), within the meaning of Article 93(5) of [the Community Trade Mark Regulation], in the case where, as a result of an act in another Member State (Member State B), there is participation in the infringement in the first-named Member State (Member State A)?
2. Is Article 5(3) of [the Brussels I Regulation] to be interpreted as meaning that the harmful event occurred in one Member State (Member State A) if the tortious act which is the subject of the action or from which claims are derived was committed in another Member State (Member State B) and consists in participation in the tortious act (principal act) which took place in the first-named Member State (Member State A)?’
14. Written observations were submitted to the Court by Coty Germany, First Note Perfumes, the Swiss and United Kingdom Governments and the European Commission. The parties to the main proceedings, the German Government and the Commission were represented at the hearing, which took place on 19 September 2013.
III – Analysis
A – Preliminary observations
15. At the outset I must point out that, since the facts underlying the main proceedings date from 2007, only those provisions of the Community Trade Mark Regulation and Brussels I Regulation cited in the questions referred for a preliminary ruling are applicable ratione temporis, to the exclusion of the equivalent provisions under Regulation (EC) No 207/2009 (11) and Regulation (EU) No 1215/2012 (12) respectively amending the former two regulations. Nevertheless, the provisions relevant in this case were not subject to amendments affecting their wording.
16. I would add that the crux of the two questions referred by the national court lies in the settled case-law of the Court emerging from the Bier judgment, known as ‘Mines de Potasse d’Alsace’. (13) It is clear from that case-law that, in respect of jurisdiction in matters relating to tort or delict, the expression ‘place where the harmful event occurred’ in Article 5(3) of the Brussels Convention (14) refers both to the place of the causal event giving rise to the damage and to the place where the damage occurred, with the result that the defendant may be sued, at the option of the applicant, in the courts in either of those two places.
17. Although that option is, clearly, also available under Article 5(3) of the Brussels I Regulation which replaced that convention, (15) uncertainty persists, as reflected in the second question, as to whether that option can be extended to include a connecting factor relating to acts committed by a person against whom no action has been brought, more specifically from the perspective of the place where the damage occurred. The first question first of all calls on the Court to rule as to whether that case-law could be implemented in a similar manner in respect of Article 93(5) of the Community Trade Mark Regulation or whether that provision must be interpreted independently and, in any event, whether this could give rise to a ground of jurisdiction for any court seised of an action for infringement in a situation such as that arising in the main proceedings.
B – Interpretation of Article 93(5) of the Community Trade Mark Regulation
– Introductory remarks
18. By its first question the referring court asks the Court, in essence, whether Article 93(5) of the Community Trade Mark Regulation must be interpreted as meaning that it allows the courts of the place where the act of infringement of a Community trade mark occurred which is attributed to one of the presumed perpetrators of that infringement, who is not a party to the dispute, to assume jurisdiction over another presumed perpetrator of that infringement who, for his part, has not acted within the jurisdiction of the court seised.
19. In more specific terms, the Bundesgerichtshof is uncertain whether, in this instance, an act of infringement, within the meaning of that article, was committed in Germany in so far as the sale of the bottles of perfume at issue by First Note Perfumes to Stefan P., although taking place in Belgium, contributed to the infringement of Coty Germany’s rights over the Community trade mark which was committed by Stefan P. in Germany, with the result that the German courts would have jurisdiction over First Note Perfumes.
20. The referring court and Coty Germany are in favour of an affirmative answer, unlike First Note Perfumes and the Commission. The German Government maintained that Article 93(5) of the Community Trade Mark Regulation does not provide for any jurisdiction of the courts based on the place where the result of the infringement arises, but that it allows jurisdiction to be conferred where several persons have knowingly participated in a cross-border infringement of a Community trade mark. The Swiss and United Kingdom Governments did not submit observations on this matter.
21. In support of its analysis, the referring court proceeds from the principle that, in order to determine whether a court of a Member State has jurisdiction, identification of the place where the act of infringement has been committed within the meaning of Article 93(5) of the Community Trade Mark Regulation must meet the same criteria as those relied upon to identify the place where the harmful event occurred within the meaning of Article 5(3) of the Brussels I Regulation.
22. However, I take the view, for the reasons set out below, that an analogy of that nature cannot succeed. Therefore, the former provision should, to my mind, be interpreted separately from the latter.
– Non‑applicability of the case-law on the interpretation of Article 5(3) of the Brussels I Regulation
23. The referring court considers that determining the Member State in which a purported act of infringement has been committed within the meaning of Article 93(5) of the Community Trade Mark Regulation depends both on the place of the event giving rise to the damage (16) and on the place where the damage occurred, (17) in accordance with the line of authority devolving from Mines de Potasse d’Alsace. It asserts that this interpretation deriving from an analogy with the accepted alternative for Article 5(3) of the Brussels I Regulation is predominantly upheld in academic writings (18) and is also consistent with the meaning and purpose of those two provisions.
24. Assuming that those two connecting factors are indeed relevant, in the Court’s opinion, in terms of applying that article, it would then be necessary to examine whether, in this case, one of those factors could be considered to be established in respect of First Note Perfumes, which would presuppose that the acts of infringement committed in Germany by the purported principal perpetrator, Stefan P., could be attributed to the former company in so far as it participated in those acts indirectly. The German courts would as a result have jurisdiction to adjudicate in respect of First Note Perfumes even though Stefan P. was not being sued.
25. However, in my view, various arguments militate against the possibility of interpreting Article 93(5) of the Community Trade Mark Regulation in the light of the case-law on Article 5(3) of the Brussels I Regulation.
26. First of all, I recall that the Community Trade Mark Regulation expressly addresses the relationship between those two instruments in that Article 90(1) of the regulation, the terms of which are expressed more succinctly in its fifteenth recital, lays down the principle that the Brussels Convention will apply in the event of actions at law relating to a Community trade mark, which is also true of the Brussels I Regulation. (19)
27. However, there are exceptions to that principle. In particular, Article 90(2)(a) of the Community Trade Mark Regulation precludes the application of Article 5(3) of the Brussels I Regulation to proceedings in respect of the actions and claims referred to in Article 92 of the former regulation, (20) including in particular ‘all infringement actions’. (21) Having regard to that exception, Article 93 of the Community Trade Mark Regulation provides for several grounds of jurisdiction, applying in descending priority, which are specific to the matter covered by that provision and are at times notably different to the grounds provided for in the Brussels I Regulation, (22) in particular in Article 93(5). (23) At this juncture I should point out that the express statement (24) to the effect that Article 5(3) of the Brussels Convention is not to apply to infringement actions, for which Article 93(5) of the Community Trade Mark Regulation is substituted, laying down a specific rule of jurisdiction in the matter, precludes in my view a joint interpretation of those two provisions.
28. Contrary to the viewpoint expressed by the referring court, my view is that the specific nature of the latter provision cannot be denied, especially having regard, secondly, to its origin. Indeed, the drafting history shows that, even before the legislative phase, in the strict sense, was initiated, the process of drawing up the draft regulation on the Community trade mark involved consideration of the rules of jurisdiction contained in the Brussels Convention and the case-law of the Court relating to their interpretation. (25) Within the Commission, the Working Group on the Community Trade Mark pointed out that those rules seemed to be insufficient for resolving the particular problems created where the rights arising from a single Community trade mark are infringed in several Member States. In particular, the working group considered that, in view of the specific nature of the Community trade mark, it was necessary to amend the rule under Article 5(3) of the Brussels Convention. (26) I would add that the content of what constitutes the specific feature of the special ground of jurisdiction laid down in Article 93(5) of the Community Trade Mark Regulation (27) has never been called into question, in spite of the series of amendments applied to the regulation. (28)
29. Thirdly, contextual factors reinforce the argument that the draftsmen for the Community Trade Mark Regulation had the intention of differentiating between that provision and the provision existing in the Brussels Convention. Comparison with instruments adopted in related areas shows that the Community legislature consciously opted to reject the ground of jurisdiction contained in Article 5(3) of the convention, an approach which it chose to adopt in other texts concerning intellectual property (29) but, on the contrary, departed from in Regulation (EC) No 2100/94 on plant variety rights. (30) This contrast cannot be reduced to a mere clerical error as the referring court appears to be suggesting. In my view, it is all the more telling that the drafting and adoption of the latter instrument are contemporary with the drafting and adoption of the Community Trade Mark Regulation.
30. Fourthly, it is my view that the series of grounds leading the Court to make the distinction between the place of the event giving rise to the damage and the place where the damage occurred which applies with regard to Article 5(3) of the Brussels I Regulation cannot be transposed onto Article 93(5) of the Community Trade Mark Regulation in view of the many disparities which exist in terms of the content of each of those provisions.
31. Thus the place where the act of infringement was committed is a narrower concept than the place where the harmful event occurred. (31) Moreover, the vocabulary used in Article 93(5) seems to point to active conduct, which would be more meaningful if applied to the place of the event giving rise to the damage rather than to the place where the damage occurred, whereas the broad interpretation of Article 5(3) of the Brussels I Regulation appears to have been facilitated by the more neutral terminology used there. (32) Lastly, I would point out that the scope of the jurisdiction conferred by either of those provisions differs in various aspects, (33) which lessens correspondingly the usefulness of any assimilation.
32. It can, in my view, be inferred from the specific features of the wording of Article 93(5), (34) viewed in the context in which this provision was drafted, that it does not create jurisdiction by reason of the place where the damage occurred. Analogous application of the Mines de Potasse d’Alsace judgment to that provision must therefore be ruled out.
33. Nevertheless, according to the referring court, Article 93(5) of the Community Trade Mark Regulation, which, in derogation from Article 93(1) to (4), establishes jurisdiction in the place where the act of infringement has been committed, proceeds from the same considerations as those underlying Article 5(3) of the Brussels I Regulation. In this regard, it has recourse to the existence of a particularly close connection between the dispute and the courts of the place where the harmful event occurred, a factor which justifies the attribution of jurisdiction to those courts for reasons relating to the sound administration of justice and the efficacious conduct of proceedings.
34. In the light of that argument, one final question may remain outstanding, namely whether, although an analogous interpretation is not possible, the guiding principles applying to the interpretation of the Brussels I Regulation should still be applied to the interpretation of Article 93(5) of the Community Trade Mark Regulation, even though that instrument does not refer to them. Those principles include the requirements relating to a close link between the dispute and the court seised, the sound administration of justice and the efficacious conduct of proceedings, but also to the predictability of the rules of jurisdiction and legal certainty.
35. In this regard I would point out that those diverse requirements were primarily derived from principles of interpretation established by the Court in its case-law on the Brussels Convention and subsequently on the Brussels I Regulation, the latter referring to some of them expressly. (35) They are the result of conditions arising implicitly from the provisions assessed by the Court as well as of general and common sense considerations. Those universal principles could therefore be applied in relation to another instrument, on the condition that this is not prohibited by the content or objective of the rule of jurisdiction concerned.
36. I would observe that it cannot be argued that a lack of predictability or legal certainty could be the result of a non-uniform interpretation of the provisions of those two instruments: conflating them would effectively mean denying that the rules of jurisdiction laid down by the Community Trade Mark Regulation constitute, as it were, a lex specialis as compared with the rules under the Brussels I Regulation. The choices made by the Community legislature in that other legal context must be respected.
37. Consequently, I propose that the Court should undertake an independent interpretation of Article 93(5) of the Community Trade Mark Regulation while taking account of the requirements mentioned above to the extent that the regulation allows, in order to answer the first question referred.
– Assessment of possible extension of jurisdiction on the basis of the place where the damage occurred, including damage caused by a third party who is not a defendant in the proceedings
38. The Court is called upon to give a ruling as to the possibility of conferring jurisdiction by virtue of a connecting factor, whereby under Article 93(5) of the Community Trade Mark Regulation it would be possible to sue a defendant on the sole ground that he had participated indirectly, in one Member State, in a purported act of infringement committed principally, in another Member State, by a third party who is not a defendant in the proceedings brought in the courts of the latter Member State.
39. It is apparent, in my view, from Article 94(2) of the Community Trade Mark Regulation that the rule of jurisdiction laid down in Article 93(5) of that regulation is based on the principle of territoriality, which is defined here in narrow terms. (36) Article 94(2) provides that a court with jurisdiction under Article 93(5) may ‘have jurisdiction ... only in respect of acts committed or threatened within the territory of the Member State in which that court is situated’, whereas the courts whose jurisdiction is based on Article 93(1) to (4) may have jurisdiction also in respect of acts of infringement committed outside the territory of the Member State.
40. Moreover, the drafting history for the Community Trade Mark Regulation suggests that the special ground of jurisdiction deriving from Article 93(5) of the regulation should be interpreted restrictively. That approach is necessary for reasons specific to that instrument which relate to the difficulty in reconciling the unitary character of the protection granted by the Community trade mark (37) and the risk of infringements in several places within the European Union. (38) First Note Perfumes, the German Government and the Commission focus, and rightly so, on the fact that where a Community trade mark is infringed, each Member State could in practice be considered to be the place where the infringement occurred, since the protected right produces its effects across the entire territory of the European Union.
41. I would add that the legislature had initially contemplated the idea of a unified court (39) and that the ultimate decision to grant the jurisdiction to the national courts appears to be a compromise. This points in favour of an interpretation which limits the fragmentation of the proceedings relating to this uniform intellectual property right. The objective of preventing inconsistent decisions is indeed mentioned expressly in the preamble to the Community Trade Mark Regulation. (40)
42. A further objective of that regulation, which is apparent from the legislative history, (41) is that of avoiding ‘forum shopping’. This also militates against the broad interpretation that it is possible to sue a person suspected of having participated in an act of infringement on the basis of any connecting factor relating to the unlawful activity of another person who, for his part, is not being sued.
43. Lastly, it is necessary to ascertain whether the guiding principles established by the Court when interpreting the Brussels I Regulation (42) would justify a contrary interpretation of Article 93(5) of the Community Trade Mark Regulation. In my view, that should not be the case here in the light of the specific features of that ground of jurisdiction which are described above. It seems to me that, in the specific matter of the protection of the unified intellectual property right in the form of the Community trade mark, the legislature identified priorities relating primarily to the concentration of the proceedings in the courts of one Member State, that is to say, in the Member State where the act of infringement has been committed or threatened.
44. I therefore consider that the answer to the first question referred for a preliminary ruling should be that, for an alleged act of infringement to be regarded as having been committed in a Member State for the purposes of Article 93(5) of the Community Trade Mark Regulation, and thus to make it possible to establish the jurisdiction of the courts of that Member State, it is not sufficient that the defendant participated indirectly, by means of an act taking place in another Member State, in the infringement of the rights relating to the Community trade mark which was committed in the former Member State by a third party who is not a defendant in the proceedings before the courts.
C – Interpretation of Article 5(3) of the Brussels I Regulation
– Introductory remarks
45. The second question relates to whether Article 5(3) of the Brussels I Regulation must be interpreted as meaning that it allows the courts to assume jurisdiction over one of the presumed perpetrators of the alleged damage, even though that defendant has not acted within the jurisdiction of the court seised, where the tortious act of which he is accused was committed in another Member State and consists in participation in a ‘principal act’ (43) committed by another presumed perpetrator in the Member State where that court has its seat.
46. In this connection, the referring court, Coty Germany and the German and Swiss Governments have expressed their support for such a ground of jurisdiction based on the connection to the acts of a third party. The United Kingdom Government was more subtle in its approach, proposing that this possibility be subject to detailed requirements, namely that it be allowed only if there is a sufficiently clear and direct link between the alleged unlawful act committed in the Member State where the court seised has its seat and the actions of the defendant in another Member State. However, First Note Perfumes and the Commission expressed their opposition to that option.
– Lessons to be drawn from the case-law
47. At the outset it must be recalled that all the provisions of the Brussels I Regulation must be interpreted independently, by reference to its scheme and purpose. (44)
48. According to recital 11 in the preamble to that regulation, ‘[t]he rules of jurisdiction [laid down by that regulation] must be highly predictable and founded on the principle that jurisdiction is generally based on the defendant’s domicile and jurisdiction must always be available on this ground save in a few well‑defined situations in which the subject-matter of the litigation or the autonomy of the parties warrants a different linking factor.’
49. Thus, it is only by way of derogation from the fundamental principle laid down in Article 2(1) of the Brussels I Regulation, attributing general jurisdiction to the courts of the Member State in which the defendant is domiciled, that Section 2 of Chapter II thereof makes provision for certain special jurisdictional rules, such as that laid down in Article 5(3) of that regulation. (45)
50. As regards, in particular, the rule of special jurisdiction laid down in Article 5(3) of that regulation, the Court has already ruled that the rule is based on the existence of a particularly close connecting factor between the dispute and the courts of the place where the harmful event occurred or may occur, which justifies the attribution of jurisdiction to those courts for reasons relating to the sound administration of justice and the efficacious conduct of proceedings, (46) in accordance with the guidance given in recital 12 in the preamble to the Brussels I Regulation. Identification of the place of the event giving rise to the damage must enable the court objectively best placed for determining whether the elements establishing the liability of the person sued are present to take jurisdiction. (47)
51. As a rule of special jurisdiction, thus taking the form of a derogation, that provision must be interpreted restrictively and, accordingly, cannot give rise to an interpretation going beyond the cases expressly envisaged, (48) given that the general rule on the jurisdiction of the courts of the defendant’s domicile cannot be reversed.
52. Nevertheless, in accordance with the settled case-law arising from the Mines de Potasse d’Alsace judgment, the expression ‘place where the harmful event occurred or may occur’ in Article 5(3) of the Brussels I Regulation is intended to cover both the place where the damage occurred and the place of the event giving rise to it. (49)
53. The Court has already given a negative answer, in part, to the second question referred in this case as regards one of those two connecting factors, that is to say the place of the event giving rise to the damage, in which connection the possibility of establishing jurisdiction based solely on a person’s imputation as an accomplice in an act was ruled out. It is evident from Melzer that ‘Article 5(3) of [the Brussels I Regulation] must be interpreted as meaning that it does not allow the courts of the place where a harmful event occurred which is imputed to one of the presumed perpetrators of damage, who is not a party to the dispute, to take jurisdiction over another presumed perpetrator of that damage who has not acted within the jurisdiction of the court seised’.
54. Admittedly, by its reference to the term ‘place where the harmful event occurred’, the referring court seems to focus, in its second question, on both the place of the event giving rise to the damage and the place where the damage occurred. In point of fact, the jurisdiction of the German courts might, in view of the facts of the case in the main proceedings, be based on either of those criteria, provided that it is possible to take into account, in connection with First Note Perfumes, the acts committed in Germany by Stefan P.
55. However, it should be noted that the referring court was unable to take the findings made in Melzer into consideration, since that judgment was given after it submitted its request for a preliminary ruling. Notwithstanding the general wording of the question referred, my observations below will be confined to the ground of jurisdiction relating to the place where the damage occurred, (50) since the other aspect of the matter raised by this case has already been addressed by the Court in the Melzer case.
56. The Court has also given a ruling on the connection resulting from the place where the damage occurred, in an even more recent judgment concerning a specific area, namely a tortious act consisting in an infringement of copyrights. According to the judgment in Pinckney, ‘Article 5(3) of [the Brussels I Regulation] must be interpreted as meaning that, in the event of alleged infringement of copyrights protected by the Member State of the court seised, the latter has jurisdiction to hear an action to establish liability brought by the author of a work against a company established in another Member State and which has, in the latter State, reproduced that work on a material support which is subsequently sold by companies established in a third Member State through an internet site also accessible within the jurisdiction of the court seised. That court has jurisdiction only to determine the damage caused in the Member State within which it is situated.’ It will be necessary to draw conclusions from this judgment too, in so far as that decision may be transposed onto this case.
– Assessment of possible extension of jurisdiction on the basis of the place where the damage occurred, including damage caused by an independent third party
57. The second question referred for a preliminary ruling, as reworded in the light of the established case-law set out above, calls upon the Court, in essence, to rule as to whether Article 5(3) of the Brussels I Regulation must be interpreted as meaning that it allows jurisdiction to be established, on the basis of the place where damage occurred, the causal act of which is attributed to one of the presumed perpetrators of the damage, over another presumed perpetrator of that damage who has not himself acted within the jurisdiction of the court seised.
58. It should be pointed out that, having regard to the principle of independent interpretation which must be applied to the provisions of the Brussels I Regulation, a clear distinction must be made between, on the one hand, the conditions for liability in tort which fall within the scope of an assessment of the merits of the case in accordance with the law applying to the dispute and, on the other hand, the spatial connections which are relevant at the stage of determining jurisdiction based on the concepts contained in that regulation. According to the Court’s case-law, (51) there is no systematic coherence as between those two groups of legal rules, with the result that, in my view, for a court to be allowed to take jurisdiction pursuant to Article 5(3) of that regulation, in particular by reason of the place where the harmful event occurs, it cannot be sufficient that the applicable law or the lex fori allows redress for a certain type of damage or follows specific arrangements, such as attributing to the defendant acts committed by a third party assisted by the defendant, as envisaged by the referring court.
59. If an approach of that kind had to be allowed as regards the concept of the place where the damage occurred for the purposes of Article 5(3) of the Brussels I Regulation, the Court would in that case be confronted with the need to create a quantitative and/or qualitative ‘threshold’ for imputation above which, in the event that there are several participants in the commission of a tortious act, one of them might or might not be sued in the place where the damage resulting inter alia from its action occurred. That specific issue did not arise in the Melzer case, since, with regard to the place of the event giving rise to the damage, the act of each of the perpetrators acting in different Member States can be pinned down in spatial terms more easily than the place where the damage occurred. Although the facts of the main proceedings in the present case enable a clear distinction to be drawn between the principal and the accessory liability, (52) it is necessary not to lose sight of the fact that other sets of circumstances could prove more complex, both quantitatively (53) and qualitatively. (54)
60. On the latter point, I recall that the United Kingdom Government proposes to make acceptance of the envisaged ground of jurisdiction conditional upon a criterion relating to the existence of a ‘sufficiently clear and direct link’ between the actions of the defendant in a first Member State and the alleged unlawful act committed by a third party in the Member State where the court seised has its seat, going on to suggest how this approach might be applied specifically in the light of the facts of the main proceedings. (55) However, if the issue were to be assessed from such a perspective, it would first be necessary to define material criteria which could be difficult to pinpoint, (56) with the risk that it might be necessary in each individual case to carry out a lengthy and complex assessment of the facts, not unlike an examination of the merits of the dispute. To my mind, that would be contrary to the objective of the Brussels I Regulation which is to lay down rules of jurisdiction which are both common to all the Member States and foreseeable for the parties to a dispute, (57) recourse to which is thus both certain and rapid.
61. Furthermore, it seems reasonable to me to fear that an interpretation of Article 5(3) of the Brussels I Regulation as broad as the interpretation proposed by Coty Germany might lead to generalisation of the jurisdiction of the forum actoris and thereby encourage forum shopping. As the Court has pointed out, (58) by retaining the general jurisdiction of the courts of the defendant’s domicile and clearly excluding the jurisdiction of the courts of the applicant’s domicile, the European Union legislature opted for a principle subject to the fewest possible exceptions. Furthermore, a multiplication of courts having jurisdiction heightens the risk of irreconcilable decisions that the Brussels I Regulation specifically sought to avoid, (59) bearing in mind that mutual recognition of decisions is impossible in such circumstances. (60)
62. In the circumstances of this case, I consider there to be no grounds for that derogation, based on the existence of a particularly close connection between the dispute and the courts of the place where the harmful event occurred. If the jurisdiction of the German courts was to be allowed solely on the basis of a connection to the acts committed in Germany by a third party purported to be the perpetrator of the alleged principal act, that would result in inconsistency with those grounds. In specific terms, those courts would find it necessary to assess the liability of a defendant who purportedly assisted in that tortious act by means of acts committed solely in another Member State.
63. There is some risk that such a broad interpretation will foster litigious strategies, with purported victims merely suing the most solvent opposing party before a court in the jurisdiction of which one of the connecting factors relating to the activity of another person who participated in the event giving rise to the purported damage arises. By that means, an applicant could easily circumvent the arrangement which is specifically established, in Article 6(1) of the Brussels I Regulation, (61) for the purpose of consolidating separate legal proceedings involving a number of defendants and of avoiding irreconcilable decisions in the case. (62) The general risk of such manoeuvres cannot be overlooked, even if, in this instance, it appears that the applicant has not sued the third party purported to be the perpetrator of the principal act for reasons relating to the conclusion of an out‑of‑court settlement with it. (63)
64. Thus, it seems to me that the place where the damage occurred, caused by the voluntary acts of persons other than the defendant, in a purported chain of causality, should not in itself establish a ground of jurisdiction with regard to that defendant, particularly as the scope of that chain is not clearly defined and could therefore be infinite. In other words, Article 5(3) of the Brussels I Regulation should not, to my mind, allow the person purportedly liable for an alleged tortious act to be sued in a court having its seat in a Member State in which that person is not domiciled on the sole ground that another tortious act allegedly committed by a third party who is not being sued produced its harmful effect in that Member State and the defendant’s act facilitated the acts which that third party decided to commit subsequently.
65. This position seems to me to be consistent with the interpretation adopted by the Court in Melzer, the terms of which could, in my view, be generalised, with the result that the jurisdiction of the courts over one of the presumed perpetrators of damage who has not committed a tortious act within the jurisdiction of the court seised cannot be extended either to the place where the act occurred which is attributed to another presumed perpetrator who, for his part, has not been sued, or to the place where the damage resulting from that act occurred. I consider that it would be preferable to find that a sufficient causal link must exist with regard to the sole defendant against which proceedings are brought for a court to be able to assume jurisdiction.
66. Notwithstanding those considerations, I cannot omit to note that, unless the view is taken that the position recently adopted by the Court in Pinckney (64) is specific to the particular circumstances concerned, (65) the reasoning set out there may lead in the present case to an outcome contrary to that which would seem capable of arising from the Melzer judgment.
67. In Pinckney, the Court ruled that ‘as regards the alleged infringement of a copyright, jurisdiction to hear an action in tort, delict or quasi-delict is already established in favour of the court seised if the Member State in which that court is situated protects the copyrights relied on by the plaintiff and [if] the harmful event alleged may occur within the jurisdiction of the court seised.’ (66)
68. If other types of tortious act were to be extrapolated from this, (67) that approach could, in my view, result in a court having jurisdiction, on the basis of the place where the damage occurred, where, as in the main proceedings in this case, that damage stems from the fact that the suspect product ‘may’ be made available to consumers in the Member State where that court has its seat and such an act is penalised in respect of civil liability under the lex fori. In the light of the Pinckney judgment, it appears to be irrelevant that the purportedly unlawful act produced effects, within the jurisdiction of the court seised but as a result of the actions of an independent third party who has acted outside the Member State both of the court seised and of the applicant and who has not been sued.
69. Given that the facts underlying this case have similarities with those in the Pinckney case, (68) while the differences between those two cases do not seem to me to be crucial, (69) it is difficult for me to find arguments to justify deviating from the accepted path for the purpose of identifying the place where damage has occurred as defined by Article 5(3) of the Brussels I Regulation.
70. Consequently, I consider that if the Court intended in this instance to follow the broad approach adopted in Pinckney, it should answer the second question referred for a preliminary ruling in the affirmative, in the manner set out below. However, in the interests of completeness, I shall also draft a proposed negative answer in the alternative, should the Court, on the contrary, consider that the position adopted in that judgment was specific to the situation at issue in the case giving rise to it.
IV – Conclusion
71. In the light of the foregoing considerations, I propose that the Court’s answer to the questions referred by the Bundesgerichtshof for a preliminary ruling should be as follows:
(1) Article 93(5) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that it does not allow jurisdiction to be established, on the basis of the place of the act of infringement of a Community trade mark which is attributed to one of the presumed perpetrators of that infringement, over another presumed perpetrator of that infringement who has not acted within the jurisdiction of the court seised.
(2) Article 5(3) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters must be interpreted as meaning that it allows jurisdiction to be established, on the basis of the place where the damage occurred, the origin of which is attributed to one of the presumed perpetrators of that damage, over another presumed perpetrator of the damage who has not acted within the jurisdiction of the court seised.
In the alternative:
Article 5(3) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters must be interpreted as meaning that it does not allow jurisdiction to be established, either on the basis of the place of the act giving rise to the damage which is attributed to one of the presumed perpetrators of that damage or on the basis of the place where that damage occurred, over another presumed perpetrator of that damage who has not acted within the jurisdiction of the court seised.