Cabinet Beau de Loménie
In the context of litigation between the French company Concurrence (hereinafter referred to as “Concurrence”), distributor of consumer electronic products, and one of its suppliers, the company Samsung Electronic France (hereinafter referred to as “Samsung”), about a selective distribution contact between them, once again a question has arisen regarding the application of Article 5(3) of Regulation No. 44/2001 of December 22, 2000, referred to as "Brussels I", on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters. That article, regarding determination of the Court that may have jurisdiction in matters relating to tort, delict or quasi-delict, provides that “A person domiciled in a Member State may be sued in another Member State, in the courts of the place where the harmful event occurred or may occur”.
In the case at issue, Samsung put an end to its contractual relations with its distributor Concurrence because the latter had sold Samsung high-end products online, on its own website “concurrence.fr”, even though the contract prohibited this. Concurrence considered that this contractual provision was being applied in a discriminatory way and, therefore, summoned Samsung before the Paris Commercial Court, in summary proceedings, in order to obtain delivery of goods without being bound by that contractual provision. Its requests were rejected in first instance and on appeal. Concurrence then filed a new summons against Samsung France and the company Amazon services Europe –another authorised distributor of Samsung products, based in Luxembourg – in order to obtain the withdrawal of any offer of Samsung’s products on Amazon’s various foreign websites.
However, both the Commercial Court and the Court of Appeal decided that the French courts lacked jurisdiction on the grounds that “French judges have jurisdiction in disputes concerning sales on the Internet only if the website on which the distribution is performed is specifically aimed at the French public”.
Concurrence further appealed before the Supreme Court on the grounds that, in matters relating to tort, when a website is accessible on a territory the Courts of the State of this territory have jurisdiction and, should the accessibility criteria be considered insufficient, the Court of Appeal had, contrary to what was requested, failed to clarify whether the system implemented by Amazon enabled the shipment of goods to France, which would justify the jurisdiction of the French Courts.
The Commercial Chamber of the French Supreme Court recalled the interpretation of Article 5(3) of Brussels I previously given by the Court of Justice of the European Union in the Wintersteiger case (C-523/10, April 19, 2012) in the field of trademarks and referencing by keywords, as well as in the Pinckney case (C-170/12, October 3rd, 2013) regarding the infringement of copyright by the online offer of an author’s work without his authorization.
In the first of the above decisions, the European Court of Justice had decided, regarding the alleged infringement of a trademark registered in a Member State, due to the use by a third party of a keyword identical to the said trademark, on a website operating under a Top Level Domain country code of another Member State, that the litigation could be brought either before the Courts of the Member State in which the trademark was registered or before the Courts of the Member State of the place of establishment of this third party.
In cases of infringement of trademark rights on or through a website, French national courts have decided that this website has to target the French public in one way or another and not be intended exclusively for a foreign public.
In the Pinckney case, the European Court of Justice considered that, in the case of copyright, where infringement was more likely to occur in many places when happening online i) the place where the damage takes place may vary depending on the nature of the allegedly violated right and (ii) it was not necessary that the harmful activity should be directed to the State of the Court seized.
The Court of Justice added that the Court having jurisdiction over the alleged infringement of an author’s right was the Court of the Member State giving protection to the right claimed and within the jurisdiction of which the alleged harm was liable to occur.
The French Supreme Court held that these previous rulings could not apply to the present case since it concerned harm alleged by a former selective distributor established in France and operating an e-commerce site, due to online sales performed by other websites accessible in and outside France which were forbidden by the supplier’s selective distribution contract.
The Supreme Court then decided to stay the proceedings and asked the Court of Justice of the European Union for the following preliminary ruling:
“Is Article 5(3) of Regulation No. 44/2001 of December 22, 2000, on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, to be understood as meaning that in a case of an alleged infringement of obligations not to resell outside a selective distribution network and through a marketplace, by means of online offers of sale on several websites operated in various Member States, the authorized distributor who considers himself aggrieved is able to bring an action for an injunction to prevent the resulting unlawful disturbance before the courts on the territory of which the online content is accessible or has been accessible, or should another connecting link be characterised?”
The decision to be rendered by the European Court of Justice may well not allow the French Courts to standardize their approaches in the field of trademarks and copyright. However, it may clarify and give consistency to some of the applications of these different approaches.
In brief: the Trademark Reform Package was adopted by the European Parliament in plenary session, on December 15th, 2015. The new Regulation will enter into force 90 days after its publication in the Official Journal of the European Union, targeted for release during the month of January. As to the new Directive, the latter will enter into force on the 20th day following its publication and will have to be transposed into national law within three years (with the exception of the provisions on invalidity and revocation administrative proceedings that benefit from a transposition period of seven years).