Judgment of the Court (First Chamber) of 19 April 2012 (reference for a preliminary ruling from the Oberster Gerichtshof (Austria)) — Wintersteiger AG v Products 4U Sondermaschinenbau GmbH

(Case C-523/10) (1)

(Regulation (EC) No 44/2001 - Jurisdiction and the enforcement of judgments in civil and commercial matters - Jurisdiction ‘in matters relating to tort, delict or quasi-delict’ - Determination of the place where the harmful event occurred or may occur - Website of a referencing service provider operating under a country-specific top-level domain of a Member State - Use, by an advertiser, of a keyword identical to a trade mark registered in another Member State)

2012/C 165/08

Language of the case: German

Referring court

Oberster Gerichtshof

Parties to the main proceedings

Applicant: Wintersteiger AG

Defendant: Products 4U Sondermaschinenbau GmbH

Re:

Reference for a preliminary ruling — Oberster Gerichtshof — Interpretation of 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 (OJ 2001 L 12, p. 1) — Determination of jurisdiction in respect of an action seeking to prohibit the registration of a sign identical to a trade mark with a service provider operating an internet search engine in order that, following the entry of that sign as a search term (‘AdWord’), the screen automatically displays advertising for goods or services identical with or similar to those for which the trade mark at issue is registered — Situation in which the trade mark is protected in a first Member State and the said display of advertising functions only at the top-level domain of that search engine specific to another Member State, while being accessible from the first Member State and in the official language of that latter State — Criteria for determining the ‘place where the harmful event occurred or may occur’

Operative part of the judgment

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 an action relating to infringement of a trade mark registered in a Member State because of the use, by an advertiser, of a keyword identical to that trade mark on a search engine website operating under a country-specific top-level domain of another Member State may be brought before either the courts of the Member State in which the trade mark is registered or the courts of the Member State of the place of establishment of the advertiser.

(1)  OJ C 30, 29.1.2011.