December 14 2006
A recent decision of the Paris Court of Appeal may signal a major change in jurisprudence on the procedural question of the jurisdiction of French judges over foreign websites in trademark infringement cases.
In the Normalu Case(1) the Paris Court of Appeal ruled that the French courts had no jurisdiction over the alleged infringement of a French trademark by a Lebanese website available in English only, but accessible from France.
In the Normalu Case French company Normalu brought an action before the Paris Tribunal of First Instance against its former Lebanese distributor, Acet, for using Normalu's trademark CEILINGS THAT S-T-R-E-T-C-H YOUR IMAGINATION on Acet's Lebanese website. Acet invoked the lack of jurisdiction of the French courts, but the claim was dismissed by the trial-level court.(2)
Article 46 of the Code of Civil Procedure states that, in tort matters, the plaintiff may bring a case, at its option, before the following courts:
In accordance with the jurisprudence of the High Court, the Paris Tribunal of First Instance broadly interpreted Article 46, finding that "the harmful event occurs in all places where the litigious information was made available to the website's potential users". However, on the merits, the judges concluded that the trademark infringement was not constituted.
On appeal, the Paris Court of Appeal took a much narrower view of Article 46. According to the appellate court, a "sufficient, substantial or significant relationship between the litigious facts or acts and the alleged damage" is required in order to establish the jurisdiction of the French courts. Consequently, the mere fact that a foreign-based website is accessible from France is not a sufficient legal basis to establish the jurisdiction of the French courts over the website.
In order to determine whether the condition of a "sufficient, substantial or significant relationship between the litigious acts and the alleged damage" was met, the appellate court used the 'active versus passive website' test (also known as the 'destination' criterion). A website will be categorized as active or passive depending on whether the website editor intended to target the French public.
In the Normalu Case, as the Lebanese website was available in English only and "offered no products for sale to French consumers", the appellate court concluded that the connection with France was too insubstantial to justify the jurisdiction of the French courts.
The Normalu decision is remarkable in that it departs from well-established jurisprudence of the High Court.
In a consistent line of precedents on trademark infringement on the Internet, the High Court has held that, where a foreign-based website is accessible from France (regardless of whether French consumers are targeted by the website in question), the website is subject to the jurisdiction of the French courts.
In contrast with the Normalu decision (where the judges applied the destination criterion to assert the jurisdiction of the courts), the High Court always uses this test in the second stage of the procedure (ie, as part of the review of the merits of a case) after addressing the jurisdiction issue.
The Payline Case(3) was the first significant case involving the infringement of a French trademark by a foreign website. In that case the judges relied on Article 5(3) of the Brussels Convention(4) - under which the defendant may be sued, in matters relating to tort, in the courts of the place where the harmful event occurred - in order to assert the jurisdiction of the French courts. The judges concluded that the damage suffered was to be considered as having occurred in France, since the Internet is by nature accessible worldwide.
In Castelblanch(5) the High Court went even further by stating that the passive or active character of the allegedly infringing website was irrelevant when determining the French court's jurisdiction. The High Court ruled that, since the litigious website was accessible from France, "even though the website was only passive", the French courts had jurisdiction over the case.
The High Court's two-step reasoning (jurisdiction of the French courts where the website is accessible from France and review of the alleged trademark infringement in light on the destination criterion) was confirmed in the Hugo Boss Case.(6) After finding that it had jurisdiction, the High Court held that the alleged trademark infringement had not occurred since the website was not directed at the French public.
The approach adopted in the Normalu Case, which was initiated in two previous isolated decisions,(7) addressed the criticism that the High Court jurisprudence is inconsistent with the borderless nature of the Internet. In this regard, the Paris Court of Appeal made it clear that its intention was to avert the risk of "granting jurisdiction automatically to the French courts in cases where the litigious acts were committed on the Internet".
Arguably, such a reversal of the High Court's jurisprudence would be a welcome development, as it would conform to principles of jurisdiction prevailing in most of the world. It would also limit court congestion and represent a more efficient solution. Where the application of the destination criterion reveals a passive website, the Paris Court of Appeal's method saves judges the trouble of ruling on the merits of a trademark infringement claim which should have been dismissed at the beginning of the proceedings on the grounds of lack of jurisdiction.
Therefore, while the Normalu Case may not yet be considered as a reversal of the High Court jurisprudence, it is an important step towards a wiser approach by the French courts with regard to the issue of jurisdiction over trademark infringement on the Internet.
For further information on this topic please contact Bradley L Joslove or Vanessa De Spiegeleer-Delort at Franklin by telephone (+33 1 45 02 79 00) or by fax (+33 1 45 02 79 03) or by email (firstname.lastname@example.org or email@example.com).
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Bradley L Joslove
Vanessa De Spiegeleer-Delort